Trademark Law Basics, Part 4: How Do I Choose a Trademark?

his is part four of the CDAS Trademark Law Basics series. If you missed the previous installments, they are available at the following links: Part 1, Why Register a Trademark?, Part 2: Why Conduct a Trademark Search?, and Part 3: What to Expect During the Trademark Prosecution Process.

A trademark can be a word, logo, slogan, or design; it can even be a color, shape, sound or smell. However, it must be a “source identifier.” Under United States law, the exclusive right to use a trademark or service mark is granted solely to identify the source of goods and services. The ability of a mark to identify source is known as distinctiveness. Marks that are generic (like “Yellow Pages” for a business directory – or even former trademarks like “aspirin” and “escalator”) cannot be registered. Marks that are descriptive (like “Safari” for hats and jackets) cannot be registered on the Principal Register unless they have acquired a public association with the mark holder – in other words, they’ve acquired “secondary meaning” in the marketplace.

The best trademarks are fanciful (like GOOGLE® or KODAK®) or arbitrary (like APPLE® or AMAZON®), or at the very least, suggestive (like MICROSOFT® or COPPERTONE®). Trademarks may not be deceptive, scandalous, geographically descriptive or misdescriptive, disparaging, consist primarily of a surname, or—most importantly—likely to cause confusion with another mark that has been in use for longer.

In the United States, a federal statute and years of judicial decisions have established rules and guidelines for whether a mark meets these criteria. A trademark attorney can help you to select a good mark that is likely to be considered valid by the U.S. Patent and Trademark Office (“PTO”) and by state and federal courts, and distinctive and strong in the marketplace. Your attorney can also advise you on which forms of the trademark to file, in which of the 45 available classes of goods and services, and when to file each application.

If you have any questions about this article, please contact an attorney in the CDAS Trademark and Brands Practice Group.

Materials on CDAS.com are provided for informational purposes only, do not constitute legal advice, do not necessarily reflect the opinions of CDAS or any of its lawyers or clients, and are not guaranteed to be complete, correct, or up-to-date. CDAS.com is not intended to create an attorney-client relationship between you and CDAS.