How to Choose a Trademark
Wondering how to choose a trademark? This guide goes over all the things to consider when selecting a mark, including federal trademark guidelines, cultural and social impacts, and the strength of your mark.
Want to learn more? Keep reading, and we'll show you how to choose a trademark.
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Strong vs. Weak Trademarks
Before we dive into how to choose your business’ trademark, you need to understand the difference between a strong trademark and a weak trademark. Why? Because strong trademarks typically come with stronger rights.
There are five trademark strength categories. Think of them like the spiciness levels on a menu—one pepper, barely spicy at all. Five peppers? Swap your water for milk, that’s a strong trademark.
What are the levels of trademark strength?
Trademark strength is separated into distinct levels according to the United States Patent and Trademark Office (USPTO): fanciful, arbitrary, suggestive, descriptive, and generic.
The higher a trademark is on the strength scale, the more likely it will be approved by the USPTO. Moving from strongest to weakest, let’s go over how to tell the difference.
- Fanciful trademarks use made up words that mean nothing outside of the brand itself, like Google® and Lexus®. These are the Carolina Reapers of trademarks, the strongest of the bunch.
- Arbitrary trademarks use words we know, but that are unconnected to your goods/services, like Camel® for cigarettes or Apple® for computers.
- Suggestive trademarks use words that hint towards the goods/services, like KitchenAid®.
- Descriptive trademarks use words that describe the goods/services, like Holiday Inn®. Descriptive marks can be approved for the USPTO’s secondary Supplemental Register (alongside weaker rights). They can only be approved for the primary Principal Register if certain requirements are met, such as the mark being distinct from its time in commerce.
- Generic trademarks use words that literally describe the goods/services, like Drinking Glass for a cup company. The USPTO does not approve generic marks.
When you sign up for our Trademark Service, our team of experts and attorneys review your mark to help ensure it’s strong enough for the USPTO.
Choosing the Right Trademark
Choosing a trademark is an important decision. It’s not only relevant for things like customer recognition, marketability, and potential corporate buyers, but also to your bottom line.
Below are some questions to ask yourself before settling on a mark, especially if you plan to file for registration with the USPTO.
Trademark strength is one of the most important things to consider when choosing a mark. Remember, a trademark that is designated by the USPTO as descriptive will generally be relegated to the lesser register, and generic marks are never registered. A trademark that is either fanciful or arbitrary tends to provide the strongest rights, but suggestive works just fine.
Distinction is a facet of trademark strength. Since trademarks need to act as source identifiers for the products they represent, they do this by having either inherent or acquired distinction.
This idea brings us to acronyms, which can be a popular branding choice, but they’re not always distinct. The letters commonly represent words that simply describe an element of your goods/services. To trademark an acronym, you need to have a strong case for why your acronym is distinct and unique.
Like all government agencies, the USPTO has a complicated website and a no-nonsense application process. Double, triple, and quadruple checking that your mark meets all the USPTO’s requirements for registration prior to submitting your application is a must.
So what are some of these rules? Generally, to be eligible for the Principal Register, your trademark must NOT:
- Create likelihood of confusion
- Be JUST a surname (even if it’s yours)
- Be JUST the geographical description of the origin of the goods/services
- Have a living individual’s name or likeness without written permission included in the application
- Be generic
The USPTO checks every application against its federal trademark database and determines if there is likelihood of confusion. In other words, are consumers likely to mistake your good/service for another company’s?
Confusion might ensue if the marks look alike, sound alike, mean the same thing, or have the same impact on consumers. Notably, the likelihood of confusion concept only applies to businesses that offer similar or related goods/services.
Your trademark needs to be memorable. Google® wouldn’t be Google® if we all said “Wait, what’s that thing called again? With the searching? You know… like Ask Jeeves®?” This is one reason why fanciful and arbitrary marks are so strong—they stick with you.
But what makes something memorable besides being part of the cultural zeitgeist? Before we detour too far into philosophical musings on this one, just consider: Is it clever? Is it snappy? If yes, it’s probably memorable.
This might seem like a no brainer, but, really, is the trademark offensive? Words that might have no cultural meaning to one group of people could bring up a host of emotions and history in another culture. Additionally, words that are totally fine in English might be offensive in another language or translate in a way that is offensive. Make sure you take the extra time to consider the impact of your trademark before registering.
There are a few ways to make sure your trademark is interesting. Let’s consider Google® again. Google is a great word. It’s fun to say. It’s nice to look at. The design of the mark is simple and sleek without being particularly stylistic, keeping it evergreen.
Does your mark evoke a similar interest? Say it out loud. Say it in a new accent. Imagine looking at it on a smartphone or on a billboard. Make sure your trademark is as interesting as your business.
Websites are a necessity for many business owners, and having the right domain can be the difference between getting sales and getting spam. Especially if your trademark is your business name, make sure that your desired domain name is available. (Did you know you might even be able to trademark your domain?) There is a horror movie somewhere about a teenager buying a domain as a joke, holding it for ransom, and tanking a new brand. To make sure that movie isn’t about you, buy the domain early.
Though it’s a financial risk to reserve your domain name prior to approval by the USPTO, consider the domain’s importance against the cost, which typically runs $20-75 a year.
Having your brand name available as a social media handle across platforms can be crucial for a marketing campaign, as well as for the overall consistency of your brand’s online image. While there are ways to get around having your brand name as your handle, most people will search exclusively for the name of your company.
Consider your current and projected marketing plans:
- Does your business rely heavily on word of mouth?
- Do you sell your products online?
- Does having a consistent branding message matter to your donors or investors?
If you answer yes to any of these questions, consider how social media handle availability fits into your trademark plans.
Beyond having a strong, available trademark, you want to make sure that your mark fits your brand.
If you sell vintage plus size clothes, you might not want to trademark the name Squash, even though that would be an arbitrary mark and therefore a strong choice. If you sell dainty, feminine jewelry, consider the implications of trademarking CHUNK with thick block letters. Do you want your trademark to evoke something in your customers? If so, make sure to consider what the mark makes you feel or think.
Consider asking a few friends or family members unconnected to your business to rate how your potential trademarks make them feel. This could help you narrow your choice without having creative blinders on.
How to Choose a Trademark FAQs
Once you’ve chosen your trademark, you’re ready to actually apply.
You can submit an application with either an intent-to-use trademark filing basis, which means that you aren’t ready to use the trademark in commerce quite yet but you want to reserve it. Or you can file with a use-in-commerce basis, meaning you are already using the mark and want to officially register.
There is no hard and fast rule about when you should register a trademark. Many businesses like to start the process as soon as they’re selling goods or services. Other businesses, however, prefer to use the trademark in commerce for some time without registering it. And some might submit an application with an intent-to-use basis before anything is even sold. It’s up to you! The right time to register depends on the needs of your brand.
The typical trademark application process involves gathering examples of your mark as use in commerce, carefully submitting your application, responding to office actions, and eventually getting a formal registration decision from the USPTO.
The process can be complicated. Using a trademark service like Northwest’s, where attorneys are available to work out kinks in your application, can help make this process a lot smoother.
The process for applying for a federal trademark with the USPTO takes at least 12 months, but can sometimes take upwards of 18 months.
A federally registered trademark costs a minimum of $250 for a TEAS Plus application and $350 for a TEAS Standard application. This includes one good/service class. Each additional trademark class is another $250 or $350 fee.
There are many benefits to registering a trademark, both on the state and the federal level. The main reasons are: infringement protections, credibility, value, enforcement abilities, and international advantages.
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*This is informational commentary, not advice. This information is intended strictly for informational purposes and does not constitute legal advice or a substitute for legal counsel. This information is not intended to create, nor does your receipt, viewing, or use of it constitute, an attorney-client relationship. More information is available in our Terms of Service.
