September 9th, 2024

How Do I Choose a Strong Trademark?

Hello Reader,

Trademark Registration is easier with a strong Trademark.

How do I choose a strong trademark?
Are you worried that customers won't know the goods/services you are providing? You can always add a tagline to explain and not compromise a strong Trademark.
Here are the three things to look at:

1. Select a unique and distinctive name, logo, or symbol.
Why this matters: Stronger the trademark, the more likely it will get registered and easier to protect and enforce. There is a spectrum from strong to weak Trademarks with the strongest being fanciful/arbitrary to the weakest being generic:

https://www.uspto.gov/trademarks/basics/strong-trademarks
CLICK HERE for the USPTO's description of Strong Trademarks

Here are couple of examples of strong Trademarks from the USPTO's website:

Fanciful trademarks are invented words. They only have meaning in relation to their goods or services. For example, Exxon® for petroleum or Pepsi® for soft drinks.
Arbitrary trademarks are actual words that have no association with the underlying goods or services. Think of the term “apple.” If an apple orchard tried to register the word “apple” as a trademark for the type of apples they grow, that trademark wouldn’t be registerable. But, Apple® has been registered as a trademark for computers. Apple® for computers is unique.
Suggestive trademarks are words that suggest some quality of the goods or services, but don’t state that quality of the goods or services outright. Consider Coppertone® for sun-tanning products. The trademark gives the impression that using Coppertone® suntan oil will make your skin shimmer like copper.

2. Avoid generic or descriptive terms that may be difficult to protect.
Why this matters: Generic Trademarks are not registerable. Descriptive Trademarks can be registered on the Supplemental Registry instead of the preferred Principal Registry. Descriptive/Generic trademarks are also harder to enforce because the trademark itself may be used to describe the services or goods.

Examples of descriptive trademarks:

“Creamy” for yogurt
“Apple pie” for potpourri
“Bed & breakfast registry” for lodging reservations services

Examples of Generic Trademarks:

“Bicycle” for bicycles
“Bagel shop” for a bagel shop
“E-ticket” for computerized reservation and ticketing of transportation services

Note that if a rock band was named "Bagel Shop" it would NOT be generic because it that is not a common band name.

3. Consider the long-term branding potential and future expansions.
Why this matters: Weak trademarks have a harder time with enforcement and the value of the brand will diminish the more descriptive it is. Strong Trademarks are distinctive and stand out in a crowded market and distinguishes itself from its competitors.

Ask yourself:

Have I thought about what my business and Trademark will look like 10 - 20 years from now?
Is my brand significantly distinctive from others in the same market? Or can someone else use a similar word/phrase to describe their services/goods?
Can someone guess the goods and/or services that is offered from the Trademark alone?

If you would like help with strong Trademark brands, schedule your free strategy session with me today.

Keep Your Brand Safe and Protected,
J.J. Lee and the Trademark Lawyer Law Firm Team!

PS. Schedule Your Strategy Session TODAY before they are all booked!

Categories:

What are Trademark Application Suspensions?

Suspensions are when your application is on hold. There are various reasons a trademark application can be suspended. However “likelihood of confusion” with prior application(s) filed and submission of foreign application are the most common reasons the USPTO may suspend an application. During a trademark suspension period, your lawyer will provide guidance on the next steps and whether it might be best to file an argument or pursue a coexistence agreement.

What are Disclaimers for Trademarks?

A disclaimer usually refers to a statement which indicates that you are not claiming exclusive rights to use the word(s) or a design element in your trademark application. A disclaimer allows for registration without creating a false impression of the registrant’s rights. A good example of this is disclaiming “café” if your services are for a café.

What is the Supplemental Registry?

If a trademark is not eligible for the Principal Registry, there is sometimes an option to register on the Supplemental Registry. In cases where the USPTO finds the trademark application is merely ornamental, merely descriptive, or primarily geographically descriptive, the USPTO may allow the application to be registered on the Supplemental Registry. However, over time, the mark may acquire distinctiveness and possibly become eligible for the Principal Registry.

What is the Date of First Use?

Two dates must be specified in a trademark application: Date of First Use Anywhere: The “anywhere” refers to use in the U.S. or elsewhere. This is the date the goods were first sold or transported, or the services were first rendered under the mark. The use must also have been bona fide and in the ordinary course of trade. Date of First Use in Commerce: This is the date when the goods were first sold or transported, or the services were first rendered under the mark in interstate or international commerce. The use of the mark must have been bona fide and in the ordinary course of trade.

What is the Renewal Timeframe for a Trademark?

The renewal timeframe for a trademark is between the 9^th and 10^th year anniversary of the trademark registration, and then in ten-year intervals. It is important to be aware that the USPTO also requires a registrant to provide an affidavit at the 5th and 6th years of ownership stating that the trademark is still being used in commerce. Failure to comply with the renewal timeframes or the affidavit requirements will result in the cancellation of the trademark registration.