Guest article

Selecting trademarks and service marks that maximize protection and value

By Norn J Rich

- Last updated on GMT

Related tags: Trademark

In the second of two articles on trademarks, Norm J Rich explains
the trademark selection and clearance process.

Selecting a mark can be a difficult matter, requiring creativity to choose the right word, phrase, sound, smell, color or symbol to represent a company's goods or services. The goal is to adopt a mark that identifies the source of the goods and distinguishes that source from other sources. Trademarks and service marks can be categorized as follows: Arbitrary/fanciful (eg a coined term like OMEGILIN® for dietary supplements); Suggestive (eg suggests a quality of the goods like ACTIPET® for pet food);li> Descriptive (eg describes a characteristic of the goods like OSTEO RELIEF® for herbal dietary supplements); Generic (eg ASPIRIN for pain relief medication); Arbitrary/fanciful marks are considered the strongest and are entitled to the broadest scope of legal protection. Suggestive marks are also strong and enjoy a relatively wide scope of infringement protection. Descriptive marks are considered to be weak and have a narrow scope of protection. In fact, descriptive marks cannot function as trade or service marks until they have acquired secondary meaning, that is, consumers recognize that the goods/services come from a particular source. Secondary meaning is acquired through extensive use and promotion of the mark. Generic terms cannot function as trademarks. Preferably, a mark should be either inherently distinctive or suggestive. Avoid marks that merely describe one or more feature, function, purpose, use, ingredient, characteristic or other quality of the goods or services. Following are common devices used in generating word marks: Use of uncommon letters (eg J, K, Q, X, Y, Z) within a mark. Use of stylized lettering or logos.li> Combinations of common words (eg Tree Line) Combination of a house mark with a common word (eg Microsoft Word) Any potential mark should be as free as possible of the risk that it will infringe another's rights in an existing mark. The basic standard of trademark infringement is whether or not a mark "would be likely to cause confusion" with respect to an existing mark in the mind of the appropriate consuming public. Thus, consideration must be given not only to the similarity of the marks themselves, but also to: The type of goods or services involved; The channels of trade in which the goods or services are marketed; The degree of care commonly exercised by purchasers of the goods or services; The relative strength of the mark (in general, the more distinctive the mark, the greater scope of protection it provides against competing uses); The later user's intent in selecting its mark. No single factor is dominant, and other factors may be considered depending on the particular facts presented. The determination of whether or not a "likelihood of confusion" exists is highly subjective, and reasonable persons may disagree. Ultimately, such a determination involves consideration of factors that are not completely disclosed in a trademark search, and are best evaluated on a case-by-case basis by an experienced trademark practitioner. Norm J Rich is a partner with Foley & Lardner LLP and a member of the firm's Trademark, Copyright & Advertising Practice Group. He can be reached at 202 945 6100 or by e-mail at nrich@foley.com

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