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Selecting A Strong Trademark

Trademark Legal Services

At Fahey Schultz Burzych Rhodes PLC, our attorneys understand how important a strong trademark is to the identity and success of your business. As a business owner, your choice of trademark will depend on multiple factors. Your trademark should help your business stand out, but more importantly, its application must be accepted by the United States Patent & Trademark Office (USPTO). Speak with one of our attorneys to learn about whether or not your desired trademark has the potential to be accepted by the USPTO, or read below to learn how to choose a trademark.

How to Choose a Trademark:

Your choice of trademark must take into account how likely it is to be approved as a distinct mark for your product or service. The following designations describe the relative strengths of marks, in descending order:


  • Fanciful or Coined Marks: These are unique marks that have no relation to anything in the existing world. Brand names like Xerox or Kodak fall into this category. These are very strong trademarks, because they have no relation to the good or service and are often “made up” words that the trademark owner defines in commercials.

  • Arbitrary Marks: Arbitrary Marks are words that have a defined meaning, but are used in a context unrelated to their original meaning. The most commonly used example is "Apple" for computers. Arbitrary Marks are strong trademark characteristics.

  • Suggestive Marks: Suggestive marks do not directly describe the product or service, but uses imaginative words that vaguely indicate characteristics of the product or service. "Coppertone" Sunscreen is a suggestive trademark because it vaguely describes the result of using the product.

  • Descriptive Marks: Descriptive marks are more difficult to trademark, because they use basic terms to describe the product or service. "Spicy Italian Sandwiches" is an example of a descriptive mark. Descriptive marks are weak trademarks and would most likely be denied a registered trademark.

  • Generic Terms: Generic terms are unable to be trademarked because they have become an encompassing title for a whole category of products or services. Genericized trademarks are trademarks like "Thermos" or "Kleenex."

Choosing the Right Category of Goods or Resources:

Trademarks must be non-descriptive, but careful consideration needs to be given to “how” you intend to use or are using your trademarks. Trademarks are only good in the category of goods and services in which you register. That means that the same trademark may be registered in a different category of goods and services by another trademark owner and the marks can co-exist because they are not “confusingly similar.” So careful consideration should be given to those ways in which you are currently using your mark, and those ways you intend to use your mark in the future.


Are you using your trademark in your business? Are you selling goods related to your business? Is your business a service? Or are you going to sell t-shirts with your marks? All of these may be different categories of goods and services in which you may want to register.

Enforcing Your Trademark

Trademark registration means very little if your ownership over the trademark is not enforced. The trademark attorneys of Fahey Schultz Burzych Rhodes PLC are diligent about the enforcement of trademark exclusivity. You can learn more about this process on our main Trademark Law, Copyright & Intellectual Property Law page.

 

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