What "word" or symbol will you choose for your trademark to distinguish your goods or services from those of another? Trademark selection can be very tricky. The goal is to choose a mark that is distinctive and will not be confusingly similar to someone else's mark. At the same time, you want a mark that is a shield as well as a sword. This means you don't want to be sued, but you also need the ability to enforce your own rights against third parties who come too close to your playground. Your mark needs to be protect able and often times people have misconceptions about what that actually means. Here are the most common questions I am asked when I advise someone to change a name.
1. "If I just change a few letters, won't that be sufficiently different to avoid a problem?"
A mark is unregistrable if it resembles a mark which is already registered. If your mark is likely to cause confusion, do not choose that mark! For instance, NUTRASALT was denied registration because it was likely to cause confusion with NUTRASWEET. The consuming public must recognize a difference between trademarks. A different spelling or minor change is also not sufficient, since marks that sound alike are also held to be confusing. The test for likelihood of confusion fills volumes of legal decisions and treatises. Many factors go into the decision such as the strength of the marks, the competitive nature of the goods and services, whether they are related, and the class and sophistication of the consumers.
2. "But why shouldn't I include the generic name of my product as part of the trademark."
No one can trademark bottled water as "H20" or apple for an "Apple" because these are generic terms for the products and free for anyone to use. Generic terms can never be a trademark. Trademarks must be able to distinguish your apples from your competitor's apples. The mark must tell the source and must answer "Who is the source of this product?" If one already knows the generic term for the product, there is no reason to include that generic term as part of the mark when registering. For example, do not select and register GORGE! COSMETICS as your trademark. Instead, register only GORGE! since the generic term must be disclaimed and is not protected in any case. Further, you are not limiting yourself to just cosmetics and can more easily extend GORGE! to other products and services.
3. "But why can't I register a term that describes my goods or services?"
A term which is descriptive of its intended purpose, function or use of goods cannot be registered and is extremely difficult to enforce unless you can prove "acquired distinctiveness" over time. This is costly and not easy to prove. While everyone wants to tell their customer what they are selling, don't do so in the trademark or brand. Save that for marketing and advertising materials. While a term that is suggestive of the quality or ingredients is a strong mark, most people jump directly to describing. A mark which only describes the ingredients, qualities or characteristics of your goods will be allowed by the Trademark Office. "PM" for night-time drugs or "5-minute" for glue that dries in 5 minutes are examples of descriptive marks.
4. "Why can't I just register my surname as the mark?"
Generally, surnames cannot be registered as trademarks in the absence of secondary meaning. Marks that are primarily surnames are considered the same as descriptive marks. "JONES SHOES" would be an example of such a mark. There are exceptions, particularly for public figures that use their names for entertainment services or speaking workshops.
5. "Why do I need to investigate before selecting my mark?"
Investigation is key! With today's technology, it is simple to do a preliminary search on the Internet to see if your desired mark is already in use. You can first just use a search engine, such as Google, to do your research. For instance, in my above cosmetics example I wanted to originally use MECCA Cosmetics. It just came to my mind for some reason and I had never heard of it. However, I went on to Google to be certain, and sure enough Mecca Cosmetics is already a brand!
