Editor’s Note: José Cortina is a member of the Research Triangle Park law firm of Daniels Daniels & Verdonik, P.A.

RESEARCH TRIANGLE PARK, N.C. – In selecting trademarks for use in identifying a company’s products or services, many marketing consultants suggest that a name be selected which is somewhat descriptive of the products or services provided under the name.

Such an approach, while creating immediate recognition in the consumer’s mind about the nature of the goods or services provided under the trademark, often does not work to provide a strong trademark that others cannot copy when selling similar goods or services. In order to understand this concept, the following is a brief discussion of what constitutes a trademark and what aspects of trademarks make them strong and legally protectable.

A trademark can be any one or a combination of a word or collection of words, a name, a symbol or logo type. Other types of trademarks can be a design for a container or markings applied to goods, such as stripes on tennis shoes. A service mark has many of the same characteristics as a trademark, except that it identifies services instead of products. In order to acquire rights in a service mark, it must be used in connection with services provided for the benefit of others, not services delivered for the mere benefit of the company using the service mark. For all practical purposes, the same rules apply to service marks as apply to trademarks and the terms are used interchangeably in this article.

In the United States, there are several ways to protect trademarks. The most common form of protection is that known as common law rights, which accrue in the territory in which the trademark is being used, commences upon first use, and results from eventual recognition by the consuming public, who associate the trademark with a particular product and the source of the product. In this regard, it is important to appreciate that a trademark identifies a product as to source instead of as to kind or type, and this is where some of the problems arise based on current marketing recommendations.

A second form of protection arises either through registration at state trademark registries, which generally secure rights throughout an individual state, and more comprehensively, through federal registration with the U.S. Trademark Office, which establishes the registrant’s claim to ownership of the trademark, exclusive use of the trademark within the United States, and certain procedural rights, including the right to recover profits and damages in an infringement suit.

In order to have a strong protectable interest in a trademark, it is important to understand what types of terms may be selected for use as a trademark, and whether they are protectable or not. For example, to use the name of an article as a trademark results in a generic term; the user of a generic term may not acquire exclusive rights and may not obtain a federal registration. A well known trademark can become generic by losing its indication of source through its widespread use. Well known trademarks such as Escalator and Kerosene have become generic terms.

A trademark that indicates an immediate idea of ingredients, qualities or characteristics of a product may make such a trademark descriptive, and consequently be weak. The ability to obtain rights in a descriptive trademark may depend upon promotional efforts, since it is possible that a descriptive trademark can obtain what is known as “secondary meaning,” and ultimately be allowed to register with the U.S. Trademark Office. Many marketing consultants recommend adoption of descriptive trademarks because it makes initial promotion efforts easy, but ultimately may be a poor decision in the long run, because resulting trademark rights or lack of rights may be difficult to enforce against competitors.

A better type of trademark, and somewhat consistent with many current marketing guidelines, is what is known as a suggestive trademark. These marks are not descriptive, but rather hint at the nature of the goods. A suggestive trademark requires imagination, and makes the public stop and think.

Another type of trademark that is more easily protected under the law is what is known as an arbitrative trademark, which uses ordinary words in fanciful way, such as “Luvs” for diapers. Arbitrary trademarks are given a broad scope of protection and are generally very strong. Coined trademarks are the strongest of trademarks. Such a trademark is a word that has been created and is meaningless aside from its product. An example of such a trademark is “Kodak”.

As might be appreciated from the foregoing discussion, if your marketing team is advising you to select a trademark which describes the products or services provided under the trademark, you may end up with a trademark that is not very strong, and which may be copied by others and/or eventually become generic due to widespread use in describing the products or services themselves.

Suggested Guidelines

Accordingly, the following are certain suggested guidelines in selecting a trademark:

● A trademark should be memorable and should attract the eye, ear and mind of the potential purchaser.

● A trademark may not be confusingly similar to any other trademark, or likely to be confused with any other trademark in use for similar products in the same geographic area.

● A formal search aimed at determining whether a trademark is available for use and can be registered should be conducted. Depending on the outcome of the search, an intelligent decision can be made with respect to the advisability of adopting the new trademark.

Selection of a trademark is important, and if not taken seriously could result in adoption of a trademark, investment in promotional materials showcasing that mark, and then eventually having to be throw it all away because the trademark is not strong, is easily copied, or possibly infringes the trademark rights of others.

Some Rules to Follow

The following rules may be helpful to you in connection with the use of any trademark:

● A trademark must always be given distinctive graphic treatment, even in ordinary memorandums.

● A trademark, when used, should be capitalized completely or used in initial capital letters with quotes.

● A trademark should always be used as an adjective, never as a common noun.

● A trademark should always be used accompanied with the correct generic name of the product with which it is used.

● A trademark should be used in a consistent manner so that the public does not become confused. For example, it should not be hyphenated or split in other ways unless a hyphen or split is part of the trademark.

● A trademark should never be used to describe something for which the trademark is not intended to be a trademark. Thus, promotional materials bearing a trademark used for other products should be designed carefully and with a view toward not diluting the strength of the trademark.

In short, while some marketing principles may urge businesses to go in one direction when selecting trademarks, the marketing advice should be balanced against sound legal principles of trademark selection so that the result is a trademark that can be used effectively to market products or services, and that is easily protected and enforced against others seeking to trade off the strength of the trademark.

A. José Cortina is a registered patent attorney with the law firm of Daniels, Daniels & Verdonik, P.A. He focuses his practice on the intellectual property needs of small to large technology companies, including providing patent, trademark, copyright, counseling, licensing, conflict resolution and transactional services. He is experienced in a broad range of technologies, including electronics, communications, computer hardware and software, biomedical, materials, and selected chemical and chemical engineering technologies.