Choosing a trademark is one of the most important steps in building a strong brand. But not all marks are created equal—some have a much better chance of being approved by the United States Patent and Trademark Office (USPTO) than others. The USPTO evaluates applications based on specific legal standards, and understanding these can significantly improve your odds of success.
Here’s a step-by-step guide to help you choose a trademark that is both protectable and likely to be approved.
1. Understand the Spectrum of Trademark Strength
The USPTO evaluates the strength of trademarks based on a legal concept called distinctiveness. The more distinctive your mark, the better your chances of success. Marks fall into one of five categories, ranked from strongest to weakest:
• Fanciful Marks: Completely made-up words or phrases (e.g., “Xerox” or “Kodak”). These are the strongest and easiest to protect because they have no prior meaning.
• Arbitrary Marks: Real words used in an unrelated context (e.g., “Apple” for computers). These are also strong marks because they are inherently distinctive.
• Suggestive Marks: Hints at the qualities or characteristics of the product without being explicit (e.g., “Netflix” for a streaming service). These are protectable but may require more effort to establish distinctiveness.
• Descriptive Marks: Directly describe a product or service (e.g., “Cold and Creamy” for ice cream). These are generally not registrable unless you can prove they have acquired secondary meaning, showing the public associates the mark with your brand.
• Generic Terms: Common names for products or services (e.g., “Coffee” for a coffee shop). These can never be registered as trademarks.
Tip: Aim for a mark that is fanciful, arbitrary, or suggestive to maximize your chances of approval.
2. Avoid Likelihood of Confusion
The USPTO will reject your application if your mark is likely to be confused with an existing registered trademark. This happens when two marks are:
• Similar in appearance, sound, or meaning.
• Used for related goods or services that could confuse consumers.
How to Avoid This:
• Conduct a comprehensive trademark search to identify any existing marks that might conflict with yours. Searching the USPTO’s Trademark Electronic Search System (TESS) is a good start, but a professional search conducted by an attorney can uncover less obvious conflicts.
• Choose a mark that is unique and clearly distinguishable from others in your industry.
3. Avoid Descriptiveness
While it might be tempting to choose a name that describes your product or service (e.g., “Fast Shipping Solutions”), descriptive marks face an uphill battle at the USPTO. The agency often rejects them because they don’t help consumers distinguish one business from another.
Tip: Instead of being literal, think creatively. Use a word or phrase that evokes the essence of your brand without describing it outright. For example, instead of “Fast Shipping Solutions,” consider something like “Swiftly” or “Skyship.”
4. Check for Generic or Common Terms
Generic terms can never be trademarked, and highly common words may face extra scrutiny. If your mark includes a generic term or a phrase that’s widely used in your industry, it may not be eligible for registration.
Tip: Combine generic terms with distinctive elements to create a stronger mark. For instance, instead of “Fitness Gym,” you could use “ZenGym” or “Elevate Fitness.”
5. Consider Geographic and Surname Limitations
The USPTO is cautious about trademarks that are primarily geographic (e.g., “Chicago Pizza”) or based on surnames (e.g., “Smith Consulting”). These marks are considered weak because they don’t inherently distinguish your brand.
Tip: If you want to use a geographic name or surname, combine it with a distinctive element. For example, instead of “Smith Consulting,” consider “SmithVision” or “Global Chicago Foods.”
6. Keep It Simple and Memorable
A successful trademark should be easy for consumers to recognize, pronounce, and remember. Overly complex or difficult-to-spell marks may face challenges in building brand recognition and consumer goodwill, even if they’re approved.
Tip: Test your mark with others to see if it’s intuitive and memorable. If people struggle to say it or understand it, you might want to simplify.
7. Avoid Offensive or Deceptive Marks
The USPTO will reject marks that are offensive, vulgar, or deceptive. For example, you can’t register a mark that misleads consumers about the nature or origin of your products (e.g., calling your brand “Swiss Watches” if the watches aren’t made in Switzerland).
Tip: Stay professional and honest in your branding. A creative but ethical mark will avoid unnecessary legal hurdles.
8. Make Sure the Domain Name and Social Handles Are Available
In today’s digital age, your trademark should align with your online presence. A strong mark can lose value if the corresponding domain name or social media handles are already taken.
Tip: Before committing to a trademark, check the availability of related domain names and handles. Securing these early can save time and money later.
9. Think About Future Expansion
Your trademark should grow with your business. If your brand expands to new products or services, a narrowly focused mark might not cover them.
Tip: Choose a mark that’s broad enough to adapt as your business evolves. For example, a clothing company might choose a brand name like “Echo” rather than “Echo T-Shirts” to allow for future diversification.
10. Consult a Trademark Attorney
Choosing a trademark is not just a creative exercise—it’s a legal strategy. An experienced trademark attorney can help you:
• Conduct a comprehensive search to avoid conflicts.
• Evaluate the strength and distinctiveness of your mark.
• File a strong application that meets USPTO requirements.
While it’s possible to handle this process yourself, the nuances of trademark law can be tricky to navigate without expert guidance.
Conclusion
Choosing a trademark with a high chance of success at the USPTO requires a balance of creativity, strategy, and legal foresight. By aiming for a distinctive mark, avoiding conflicts, and considering your brand’s long-term goals, you can set yourself up for success.
If you’re ready to protect your brand with a strong trademark, consult with an experienced trademark attorney. They can help you navigate the process and ensure your application has the best possible chance of approval. Your trademark is an investment in your business—choose wisely!