Selecting the right trademark is a crucial step in building a recognizable and legally protected brand. A well-chosen trademark not only distinguishes your product or service in the marketplace but also strengthens your ability to protect it from imitators. With various forms of trademarks available, including wordmarks, logos, colors, and sounds, understanding how each type fits into your business goals is essential. This guide will walk you through the basics of trademark selection, focusing on the importance of wordmarks, how to evaluate their strength, and key considerations for securing a trademark that supports both your legal and marketing strategies.
Understanding Trademarks
Under U.S. law, a trademark is anything that identifies the source of a product or service. Trademarks can take many forms, including words, logos, colors, sounds, restaurant designs, product packaging, and product designs. This list isn’t exhaustive, but it illustrates the versatility of trademarks in identifying a source.
When a trademark is solely made up of words, it’s called a wordmark. Examples of wordmarks include Apple, Microsoft, and General Motors. These wordmarks may also be associated with logos, but it’s the words themselves that serve as primary identifiers. Other types of trademarks, like Tiffany’s signature cyan color on packaging or Microsoft’s startup sound, add distinctiveness but are less commonly pursued unless there’s a strong reason to protect them.
Why Focus on Wordmarks?
Most startups and companies focus on protecting wordmarks and logos, as these are more commonly at risk of infringement. Consumers typically refer to products by their names rather than logos, which makes wordmarks particularly valuable. For this reason, we’ll focus on selecting a wordmark.
Moreover, when you submit your trademark application, the primary mark to register is the wordmark, not the logo. When you protect the word mark as a standard character mark, you protect the words regardless of its design.
Strength of Wordmarks
Not all wordmarks offer the same level of legal strength. The strength of a trademark refers to how easily it can be enforced against others. Stronger marks are typically afforded broader protection. A mark’s strength depends on its distinctiveness and where it falls on the generic–fanciful spectrum, which includes five categories: generic, descriptive, suggestive, arbitrary, and fanciful.
- Generic marks directly name the product and aren’t protectable (e.g., “computer” for computers).
- Descriptive marks describe qualities of the product. They can gain protection only if they’ve acquired distinctiveness over time. Otherwise, they may qualify only for the Supplemental Register, which offers narrower protection.
- Suggestive marks imply qualities without directly describing them.
- Arbitrary marks use common words unrelated to the product (like “Apple” for computers).
- Fanciful marks are completely made-up words (like “Kodak”).
Suggestive, arbitrary, and fanciful marks are considered inherently distinctive and are granted strong protection because they aren’t directly useful to competitors in describing their own products.
Famous Marks and Extra Protections
Some brands, like Kodak and Apple, may be recognized as famous marks. Famous trademarks enjoy additional protections that go beyond the typical “likelihood of confusion” standard for infringement claims. Even if there is no risk of consumer confusion, famous marks can claim infringement based on dilution if another use of the mark weakens its strength or creates an unsavory association.
Trademark Selection Tips
When selecting a trademark, consider its distinctiveness and avoid any similarity to famous trademarks. With online marketing in mind, the type of trademark can also impact search engine optimization (SEO) and domain name availability. Search engines increasingly distinguish between brand names and descriptive terms, so weigh the potential SEO benefits of a descriptive or suggestive mark against its legal strength. If the ideal domain name isn’t available, consider adjusting the trademark to find one that fits both brand and SEO goals.
Contact Information
For more information or assistance with selecting and protecting your trademark, feel free to reach out to me at (949) 433-0900. Please share this article with anyone who might find it helpful.