Five Costly Mistakes to Avoid in Choosing a Trademark — Tips From a Los Angeles Trademark Attorney

You have selected your new trademark, service mark or business name and have paid marketing and advertising professionals handsomely for their services. You have also spent money for air time, print media, catalogs and brochures to advertise the benefits of your new products and proudly displayed your trademark. When you finally speak to a trademark attorney to protect your trademark rights, you receive bad news: your trademark is not protectable or enforceable and your competitors can freely use your mark to describe and sell their products.

The “Rooibos” trademark case illustrates why your trademark attorney should be involved in the early stages of trademark or business name selection. “Rooibos” was used on tea products and was registered with the U.S. Patent and Trademark Office (“PTO”) for many years and was purchased by an unsuspecting business. After numerous costly court battles in an attempt to protect and enforce the trademark, the registration was cancelled because “Rooibos” is the generic name for the plant used to make the tea products. To decrease the possibility of making such a costly mistake, we suggest that, at the very least, these guidelines be followed:

1. Consult with a Trademark Attorney. It is very important that you consult with a trademark attorney that has extensive trademark registration experience in the early stages of the process. You should not assume that an attorney is experienced in trademark law. One thing you can do is to look them up on the PTO’s web page, to make sure that they have previously registered numerous trademarks.

2. Strong Trademark. The trademark attorney will be able to help you navigate through the trademark strength spectrum to select a strong, protectable trademark. It is best to select a trademark from categories (a) through (c) listed below, with (a) and (b) being the easiest to register and protect.

1. Fanciful Trademark – Strong. A fanciful trademark is a made up word that only functions as a trademark or service mark. Pepsi® and Xerox® did not exist in any language before they were chosen as trademarks for drinks and copy machines.
2. Arbitrary Trademark – Strong. An arbitrary trademark is a word that exists but has no meaning when used on the product itself. “Apple,” when used on computers is a strong trademark because it doesn’t describe a quality or characteristic of the computer.
3. Suggestive Trademark – Strong. A suggestive trademark is a word that, when applied to the products or services, requires imagination, thought, or perception to reach a conclusion regarding the nature of those goods or services. Greyhound® for bus services is a suggestive trademark because a customer has to use imagination to conclude that the bus travels as fast as a greyhound dog.
4. Descriptive Trademark – Not Strong. A descriptive trademark immediately conveys information regarding an ingredient, quality, characteristic, function, feature, purpose or use of the product or service. While it is tempting to select a descriptive mark because of the ease in recognition of the goods or services provided, they are only protectable if used and advertised over a period of time so that consumers associate the mark with the good or service with which it is used. Honey-Baked® for hams and No Spot® for a car wash system were initially deemed descriptive of the products and services.
5. Generic – Weak and Unprotectable. Generic terms or common words for the products or services cannot function as a trademark because it would prevent others from rightfully using the common name for the product or service that they make. Super Glue, after a costly court battle, was deemed generic when used on a strong, rapid setting glue and not entitled to trademark protection.

3. Trademark Search – No Conflicting Trademarks. Once you have selected a few strong trademark candidates, the next step is to clear the trademarks by searching registration records to make sure there are no previous trademark right holders that would prevent your use. There are many traps for the unwary, for example, a previously registered trademark does not have to be identical to your proposed trademark to prevent your use. Blue Shield® and Red Shield, for example, have been held to be confusingly similar and the courts ordered that Red Shield not be used for insurance services.

4. Domain Name Availability. In today’s technological world, you have to make sure that the .com extension is available for your trademark. Don’t use hyphens in your domain name because that will send your traffic and customers to another site. Also, don’t misspell common words because that will unintentionally direct your traffic and customers to another site. You should also register the .net and .org extensions for your trademark to reduce the possibility of cybersquatters registering your domain name with those extensions.

5. Register Your Trademark. You need to properly and quickly register your trademark with the PTO in order to receive the most protection for your investment and to develop the valuable asset that you have just added to your business. Your experienced trademark attorney will be able to properly register your trademarks and avoid many common pitfalls in the application process.

Your trademark or service mark is a valuable asset in that it establishes goodwill with your customers. It is critical that you ensure the trademark you select is one that you can register and protect. If you need assistance in selecting and protecting your trademark, please contact Mr. Milord Keshishian by e-mail or call (310) 226-7878. Mr. Keshishian is an attorney focusing exclusively on intellectual property law and has extensive experience in all aspects of trademark, patent, copyright, trade secret, unfair competition and domain name law. Further information can be found at milordlaw.com. This article is for informational purposes only and does not establish an attorney-client relationship.

© 2006, Milord Keshishian.