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The way to hit a homerun in the Name Game of trademark law
1) Choose a strong mark, and
2) Choose one that is not close to a competitor’s pre-existing mark. If your business has a strong name and its products have strong names, the chances your customers would confuse your business or products with another company or its products is significantly reduced and your company’s brand will stand out from the crowd.
If your customers do confuse your mark with a newcomer to the field of competition, a strong mark significantly increases your chances of being able to stop that confusion and your competitor quickly and efficiently. The strong arm of trademark law will be on your team.
What are strong trademarks?
There are varying degrees of strength of trademarks. The strongest marks are ones not found in the dictionary. Xerox®, Google®, Yahoo®, and Kodak® are among the strongest marks. The next category includes marks whose word components are found in the dictionary but have nothing to do with the goods and/or services provided by the trademark owner. Apple® is the best example of this type of mark.
Further down the spectrum of trademark strength are marks that suggest the goods and/or services the trademark owner provides. For example, the mark Blackboard® brings to mind a classroom and thereby suggests the goods the company provides—educational software. Other marks having this same level of strength are marks playing on words which describe the goods and/or services provided by the company. For example, there is a local plumbing company named Plumb Reliable.™ While normally the use of the word PLUMB for a plumbing company is merely descriptive of the services provided, the fact that PLUMB in this context has a double meaning makes the mark stronger than a descriptive mark.
Types of trademarks you want to avoid
Conversely, marks that describe the goods or services provided by the company, i.e. descriptive marks, are relatively weak marks. Trademark law discourages trademark ownership of a word which describes an ingredient, quality or characteristic of the associated goods or services as such word should be open to use by all businesses providing that good and/or service. An example of a descriptive mark is Fizzy Water for sparkling water. Because all companies that sell sparkling water should be able to describe it as “fizzy,” trademark law is reluctant to give a trademark owner protection for that mark. The weakest level contains generic marks such as The Shoe Store for a store selling shoes.
The stronger the mark you choose the more likely you will be able to differentiate your goods and services from your competitor. However, you should engage a trademark attorney to make sure the mark is clear for use.
How to play the Trademark Name Game
I enjoy playing the “Name Game” with my clients starting a new business or selling a new product. Clients send me their choices for potential marks. I conduct quick preliminary searches and let the clients know which ones appear to be available as well as which marks appear to be strongest from a trademark perspective.
A recent client breaking into the mobile marketing industry sent me over twenty potential new names for his new company. Because of the creativity of the marketing industry, most of the marks the client sent me were protected already with trademark applications or registrations by other marketing companies. The client’s sales force was ready to get out of the gates and needed a name, so the client chose one of the available names he didn’t love and asked me to file the application the next morning. He was disappointed. However, instead of giving up, he kept at it and the perfect, magical name came to him that night. He emailed it to me and it cleared the search. Because of this client’s dedication to choosing a strong, available name, his company is poised to act swiftly in the face of competition in the beginning stages as well as far down the road of success.
Choose your strong mark today and find one that is available for use! If you are having trouble coming up with a strong name, I can recommend a branding company to help you.