Created and Maintained by William F. Swiggart, of Swiggart & Agin, LLC. Located in Boston, Massachusetts, Swiggart & Agin, LLC provides legal services to the technology community, including services in the areas of intellectual property law, computer law, corporate law, bankruptcy and real estate. Questions? Try the Trademark and Domain Name FAQ.

The Trademark LawTrove provides some Frequently Asked Questions and answers about the United States laws of trademarks and their registration. These FAQs are not intended as legal advice: The trademark laws change frequently as new cases are decided and statues are enacted. Consult your own attorney regarding any question you may have that is specific to your situation:

B. Choosing a Mark

1. What constitutes an effective trademark?

All good trademarks are nondescriptive, and the best are either fanciful or arbitrary.

2. Are there pitfalls to choosing a mark?

Yes, there are several pitfalls to choosing a mark for your product or service

3. Why should I conduct a search before choosing a mark?

Without a search there is always a good chance that your proposed mark is already in use for a confusingly similar product or service. If you start using an unsearched mark, an existing prior registrant may block your registration or demand that you stop using your mark, or both, thus causing you to lose your investment in the mark. Conducting a search will also give you a chance to consult your attorney who may provide valuable third party perspective concerning your choice of a mark.

4. Can another user block my use of a conflicting mark?

Yes, if a conflicting user began using his mark before you began using yours, he may ask a court to stop you from using it, whether or not he has succeeded in registering it, and even if his use is unregistered. If you persist, the user may seek monetary damages for the injury done to its trade. At the very least, you will be forced to change marks, and lose your investment in it, and to incur new fees, printing, marketing and advertising costs to establish a replacement.

5. How should I perform a trademark search?

Ask your trademark attorney to perform, or order and then analyze for you a thorough search of registered and unregistered uses of your mark in all the jurisdictions where you intend to use the mark before you commit any resources to registering or using it.

6. Isn't it a lot easier to choose a descriptive mark?

It's only easier at first, since the description will tell the consumer what the product or service is or does. However, descriptive marks aren't registrable (unless they become distinctive by acquiring secondary meaning over time), and one usually can't protect them against other users.

7. Why do people choose descriptive marks when they can cause so many problems in the long run?

Business owners may be attracted to marks that are inherently descriptive of their product or service because, firstly, a descriptive mark is simply easier to come up with. Secondly, the business initially may avoid spending marketing or advertising dollars to inform buyers what the mark stands for because the mark already describes the product. See also FAQ No. 13.

8. Are valuable marks ever descriptive?

Rarely. Almost any valuable mark that one can think of is not descriptive, and has, attained a unique association with the products or services of a particular company solely through marketing, public relations, advertising and use over time, e.g.

Even descriptive marks that start our strong because they are for unique products may become generic and lose their protection through overuse, e.g. ELEVATOR for a lift, ESCALATOR moving stairs, WINDSURFER for board sailing devices, KLEENEX for tissue paper, and THERMOS for vacuum-sealed mugs for keeping drinks hot or cold..

9. How might I avoid choosing a mark that is too descriptive?

Ask your trademark attorney whether your choice of mark may considered be too descriptive. If he express good reasons to think that it is too descriptive, consider choosing another mark.

A mark is often too descriptive if it would be burdensome on other enterprises that you blocked their use through a potential trademark. For example, "Chick-Fri" as the trademark for your product that is a breaded chicken mix. If the market would be unreasonably burdened because they would also need to use that saying for their product, it is too descriptive and you probably cannot register it.

10. Can you give an example of a real mark that carried negative connotations?

Reebok, a manufacturer of running shoes, marketed a shoe for women in 1995 that it called the SUCCUBUS. Apparently, no one in the company had bothered to look up the word in the dictionary, since it means a demon that has relations with sleeping women. The story was a PR disaster for Reebok, which had to pull all of its packaging and trade dress off the shelves for the SUCCUBUS, and come up with a new name for the shoe.

11. May I choose an acronym as a mark?

Yes, you may use an acronym -- a letter string consisting of the letters that begin each word of a phrase -- as a mark if the acronym itself is not not so well known as to be considered descriptive. A too-descriptive, or generic acronym might be TCP/IP. (for the Internet Protocol), or PAP smear (for the well known cancer test).

12. Is it advisable to choose an acronym of a phrase that is itself descriptive?

See FAQ No. A.13 & 14. Yes, sometimes the registration of an acronym is the best, or only means of obtaining a registration for an otherwise descriptive mark.

13. Where might I get ideas on how to choose a trademark?

To choose a mark, start by availing yourself of third party expert advice on the topics of creating a name for your company, choosing and building a brand, and designing a logo. See the Trademark LawTrove's On-Line Bookstore to purchase recommended books on those topics.

14. Would the people inside my company be the best persons to choose a new mark?

Not always. Some companies hold employee competitions to come up with product names on the theory that those responsible for developing the product may be the best source of naming talent as well. This is not always a good idea, though it can prove enjoyable to the employees.

15. Can you give an example of a mark chosen by company employees?

The tale has circulated regarding Coca Cola's launch of a low calorie beverage during the '60s known as TAB. What consumers didn't know was that the mark began as a pre-launch acronym for development term Totally Artificial Beverage. That this handle became a mark might show a certain lack of imagination on Coca Cola's part at the very least, While this story may be an "urban myth," it illustrates the fact that there is a tendency among company employees to become quite attached to any internal, development name although it may not be the best choice to present to the outside world.

See also FAQ No. 10