How to Choose a Strong Trademark: Distinctiveness, Conflicts and Common Pitfalls

The distinctiveness scale

The USPTO says a strong trademark is inherently distinctive and quickly identifies you as the source. The stronger the mark, the more easily you can stop others from using it, and weak marks are difficult and costly to defend. TMEP §1209.01 places marks on a continuum from arbitrary or fanciful, through suggestive and merely descriptive, to generic terms, and says the position can be judged only against the specific goods or services.

Note 1

Eight checks before you commit to a name

The earlier post offered eight tips. They hold up, but several needed correction against the USPTO's own pages:

1. Avoid famous marks. Other owners' famous marks are risky even for unrelated goods because of dilution claims (15 U.S.C. §1125(c)). A refusal is not the only risk: the owner can also sue.
2. Search the USPTO database and the goods around yours. Goods do not have to be in the same class to be related. A clothing brand in Class 25 should also look at related retail services in Class 35. See the separate guide on searching.
3. Check names that sound or look alike. Marks need not be identical to conflict. Sound, appearance, meaning or overall commercial impression can be enough when the goods are related (USPTO, Likelihood of confusion).
4. Do not use terms common in your industry. Descriptive wording is a weak base and may be refused under §2(e)(1).
5. Check state registries and business names. The federal database does not show everyone who has rights. The USPTO tells applicants to search state databases and the internet themselves.
6. Be careful with place names. A mark whose primary significance is a generally known place can be refused as primarily geographically descriptive when the goods come from that place and buyers would believe so. Obscure or remote places are less likely to be refused (TMEP §1210.01(a)). Such a mark may register with acquired distinctiveness or on the Supplemental Register (TMEP §1210.07).
7. Be careful with surnames. A mark that is primarily merely a surname is refused on the Principal Register without acquired distinctiveness. Names such as Cotton or King, which mean more than a surname, are treated differently (TMEP §1211). A name that identifies a living person needs that person's written consent (§1052(c)).
8. Look for unregistered users. A mark or trade name previously used in the U.S. by another and not abandoned can block registration (§1052(d)). A later registration can also be challenged by that user. The USPTO recommends searching the internet for third-party use.

Strength has two meanings

Lawyers use the word strong in two ways. The first is legal distinctiveness, which decides whether the mark can register. The second is scope of protection, which decides how far the owner can reach. A weak mark can register, for instance on the Supplemental Register or with acquired distinctiveness, and still be entitled to a narrower scope. TMEP §1207.01(b)(ix) notes that even a weak mark is protected against a similar mark for closely related goods, but the scope of protection for merely descriptive or weak designations may be narrower than for an arbitrary or coined word.

This is why the USPTO's page on strong trademarks warns that choosing a mark that merely describes your goods is a common misconception. Descriptive terms may register only in certain circumstances, such as acquired distinctiveness after many years of use.

Check the name in other languages

The USPTO asks applicants who plan to sell outside the United States to consider whether the name has a different meaning in a foreign language, especially an offensive one. It also asks whether the public will remember, pronounce and spell the name.

For foreign-language words there is a second issue. Under the doctrine of foreign equivalents, the USPTO may translate a non-English word mark into English and then test whether it is descriptive or generic. A word taken from a well-known modern foreign language that describes the product in that language is treated like its English equivalent (TMEP §1209.03(g)). The doctrine also plays a role in similarity of meaning when comparing marks (TMEP §1207.01(b)(vi)). Brand owners from Turkey should test a Turkish product word against its English meaning before they file.

A short decision order

A practical order for a naming project follows from the checks above:

1. List candidate names and rank them on the distinctiveness scale for your exact goods or services.
2. Drop candidates that describe the goods, name the place they come from or are mainly a surname.
3. Search the USPTO database for each remaining name, including sound-alikes and related goods, then state registries and the internet.
4. Test the names in the languages of your target markets.
5. Choose the name with the fewest conflicts, then file.