If you don’t already have a name in mind for using as a trademark to indentify your goods/services, here are some helpful tips for picking a trademark name.
- SELECT A NAME THAT HAS NOTHING TO DO WITH YOUR GOODS/SERVICES
Generally, a word or phrase may be “fanciful”, “arbitrary”, “suggestive”, “merely descriptive”, or “generic” when applied to particular goods/services.
“Fanciful” words or phrases are made up.
“Arbitrary” words or phrases have a common meaning which has nothing to do with the particular goods/services.
“Suggestive” words or phrases suggest some characteristic of the goods/services.
“Merely Descriptive” words or phrases describe characteristics of the goods/services.
“Generic” word or phrase are actual common names for the goods/services.
Assuming no one else is using a confusingly similar term, “fanciful” and “arbitrary” words or phrases are the strongest trademarks and provide the best chance of being registered at the US patent and Trademark Office.
Although “suggestive” words or phrases provide the next best chance of being registered, it is often difficult to distinguish between “suggestive” words or phrases and “merely descriptive” words or phrases as applied to the particular goods/services. Generally, “merely descriptive” words or phrases require a showing of acquired distinctiveness, whereas “suggestive words or phrases do not require such a showing.
In addition, if words or phrases are “suggestive” or “merely descriptive” it is far more likely that others have used the same words or phrases to describe the particular goods/services. Thus, if you pick “suggestive” or “merely descriptive” terms, you are more likely to come into conflict with trademarks or terms used by others, and your name or phrase may not allow you to “stand out in a crowd”.
A “generic” word or phrase, by itself, as applied to particular goods/services, cannot be registered with the USPTO and cannot be a trademark. For example the word “Apple” can never be a trademark for the apple fruit, but can be a trademark for a computer company. In the case of the computer company, the word “apple” is an arbitrary word.
- SELECT A NAME THAT IS NOT CONFUSINGLY SIMILAR TO ANYONE ELSE’S
Prior to using a name for a trademark, you can do free searching on the USPTO web site, www.uspto.gov to see if there are confusingly similar names used for similar goods/services. The USPTO website provides information regarding USPTO registered trademarks and USPTO pending trademark applications.
You can also do free searching on various search engines, such as google® to see if the name is used by others.
However, generally, you should have a US full trademark search done, which would include at least, USPTO registered trademarks, USPTO pending trademark applications, US state registrations, common law trademarks, business names, and internet domain names to see if there are confusingly similar conflicting trademarks.
It is possible for someone to have common law trademark rights, without a trademark registration, and a U.S full trademark search, typically done by an experienced trademark search service may determine any potential trademark infringement concerns.
- SELECT A NAME THAT IS NOT A FAMOUS TRADEMARK
Although trademarks generally apply to particular goods/services, it is possible that one may be liable for at least trademark dilution for use of a famous trademark for any goods/services, even goods/services that are not related to the original trademark owner’s goods/services.
So, generally, it is not recommended that you use someone else’s famous trademark, such as possibly, for example “Coca Cola®”, for anything, even if the owner of that trademark is not using it for that purpose at the moment.