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How to Pick a Trademark

You work with your marketing group and come up with a great name, but it is descriptive of your product and therefore not protectable as a trademark. Your trademark lawyer then shoots it down. What do you do? Do you let your trademark lawyer pick your trademark? No. Even the best trademark lawyer cannot pick your name for you. Trademark lawyers look for the easiest trademark to protect, not the best trademark with which to brand your product. Your trademark lawyer wants something that is unique. The key is to use your marketing department AND your trademark lawyer to pick a memorable AND protectable.

The easiest way to do this is to have your marketing department pick five potential trademarks. Have your trademark attorney then do a quick review of the potential trademarks against the United States Patent and Trademark Office online database. Of those that make the cut, have your trademark attorney from do a comprehensive trademark search and opinion letter on the one or two “best” potential trademarks making the first cut.

To reduce the likelihood your trademark lawyer will shoot down your marketing department’s pick, make sure your picks are not merely descriptive or generic.

Trademarks fall into five categories:
Fanciful (Kodak)
Arbitrary (Royal)
Suggestive (No-Doze)
Descriptive (Red)
Generic (Apples)

The top three types of trademarks are all protectable; descriptive and generic trademarks generally are not. Make sure your first five selections from your marketing department are neither descriptive or generic. Bear in mind, however, while choosing a protectable trademark is important, choosing a marketable trademark is more important. Do not let your marketing department OR your trademark lawyer choose your trademark. Help them work together to select the memorable, protectable trademark that will serve your company well for years to come.

Brett Trout

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