Selecting a trademark is the very first step in the overall application/registration process. This must be done with thought and care, because not every trademark is registerable with the United States Patent and Trademark Office (“USPTO”). If your trademark is not registerable with the USPTO, you will not be able to secure Brand Registry for your trademark.
Further, certain trademarks are harder to register than others – descriptive terms, terms that refer to places, and last names (surnames), for example, are difficult to register. Further, even if a trademark is registerable, it may not be available for use if there is a prior user of the same or similar trademark.
Undoubtedly, the most important factor in deciding on a trademark that will have the best chance of protection before the USPTO (which means the best chance for protection on Brand Registry) and least potential for conflict is a trademark that is distinctive and unique.
The stronger and more distinctive the trademark, the greater the chances of being able to register the trademark and successfully enforce the trademark against possible infringers in the market including on the Amazon marketplace. Trademarks fall within one of the following categories, from strongest to weakest:
- Fanciful or Coined Marks: A fanciful or coined mark is a novel term, a made-up word with no prior meaning. It can be a completely new word, a unique combination of parts of multiple words — the point is, you can’t find this word in the dictionary! It only exists as a trademark. Examples of coined marks are EXXON or KODAK. Neither trademark has any dictionary meaning at all. Because of this, fanciful or coined trademarks are generally the strongest marks.
- Arbitrary Marks: Arbitrary marks are those that are words that do have a dictionary definition but are totally unrelated to the product/service that the trademark serves to identify. Examples of arbitrary marks are APPLE for computers and BLACKBERRY for personal computing devices. Like fanciful or coined marks, arbitrary marks are strong marks. However, as an owner of an arbitrary mark, you would not be able to stop others from using the mark for goods/services related to the dictionary definition.
- Suggestive Marks: Suggestive marks allude to or hint (without directly describing) some characteristic of the owner’s goods/services. They stop short of describing the characteristics of the goods/services. Examples of suggestive marks are: AIRBUS for airplanes; JAGUAR for automobiles; and COPPERTONE for suntan oil.
- Merely Descriptive Marks: If you decide to use a phrase that merely describes your product, your rights may be very limited. For example, PARK N FLY for airport parking lots might be considered descriptive since it describes an attribute of the service. Words that describe any characteristic, attribute, feature, use, or location of the products/services or are merely laudatory (“best”, “world’s greatest”) are not generally granted trademark protection.
- Generic Terms: A generic term is a word or phrase that is or has become the common term associated with a particular category of goods or services to which it relates, thereby ceasing to function as an indicator of origin. Generic marks include “Clock” for timepieces, “Computer” for “computers”. Generic marks are never protectable.
Practical Pointers
- Develop a list of potential trademarks, considering the relative strength of each potential mark and where it falls on the spectrum of distinctiveness.
- Conduct your own searches online through various publicly available databases, for example, https://www.uspto.gov/trademarks-application-process/search-trademark-database, to see if anyone is using your proposed trademarks for your proposed goods/services or goods/services related to your proposed goods/services.
- Consider a trademark that lends itself to wordplay and/or has multiple meanings.
- Simple works best — don’t make your trademark difficult to say, spell or understand.
- Invented words that do not exist in any language work best.
- If you find potential conflicts (i.e. third party trademarks that are the same or similar to your proposed trademarks), share that information with your counsel so that they can give you their advice on the potential risks involved.
