Is this a good trademark?
Well, I get that question a lot as an IP attorney. I have been working on trademark cases for about ten years now. In fact, one of the first things I did as a newly minted attorney in Chicago was to file a response to an office action rejecting a trademark application by YS bee farms.
Ever since, I’ve been working with small and large businesses to get their trademarks registered or help them enforce or defend their trademark rights in courts. These clients are more or less established businesses.
Then, Amazon Brand Registry happened, and everyone wants a registered trademark now. Literally, everyone. I get an email from an individual who wants to aspire to become a successful Amazon seller every now and then. Unfortunately, these online retail newbies often ask the wrong questions:
- How much does it cost to get a registered trademark?
Well, it depends, if you want just something with ®, it would only cost you $250, seriously. If you want something of value, it can go way up.
- Are there any requirements to get a registered trademark?
Well, ironically, the answer is a trademark. You’re registering a trademark you already have! (With an exception of ITU, of course.)
The question you should ask
A business experienced in retail always come with brand/name candidates instead of a product label already printed out. They ask me questions like:
- “Can we use any of them?”
- “What do you think is the best?”
- “Are there any conflicting marks out there?
And the ultimate question: “is this a good one?”
These are all really good questions. Also, I hear them so often. When it comes to a certain mark there are always specifics that do not apply to other cases. However, there are repeating themes that are sort of universal. I want to discuss some of the universal tips.
Your brand name should be remembered. To achieve that, often you resort to tapping into your own memory and experience. Then, you come up with something familiar.
Now, familiarity is the enemy of a distinctive mark. You don’t want to pick something that has been used by another for many years. In fact, if there is likelihood of confusion between the old mark and your mark, you will be legally barred from using or registering the name.
TESS is an acronym of Trademark Electronic Search System. It’s a free and powerful tool. You can simply type up your candidate to see if there’s any identical trademarks that are registered, applied-for registration, or cancelled of registration.
I mentioned likelihood of confusion, which means you should also avoid similar marks. To find similar marks, you can do advanced searches on TESS as well. Advanced search needs some knowledge and practice. But, there are some easy things you can start right away.
Use $ signs to expand your search.
Let’s say your brand name candidate is “Aweriginal”. You can try “Awe$” or “$riginal”, which will return anything starting with awe- and ending with -riginal, respectively.
The dollar sign works fine in the non-advanced search option, “Basic Word Mark Search (New User)”.
Narrow it down to your market.
Well, the internet made all trademarks essentially nationwide. In other words, I’m not talking about the geographical market. On the other hand, you can still have identical trademarks used by independent entities. For example, you may use “Aweriginal” for your grocery store while “Aweriginal” has been used for decades by someone else for a beauty salon service.
Although there is no clear cut answer to what types of good/service can be said to be distinctive (or in different markets), you can more often than not rely on international classes. To narrow your search to a specific international class, you should use “Structured Search”.
In doing so, you can eliminate a lot of candidates that are too similar to already existing marks.
Use common sense
If your brand name reminds of someone else other than you, it’s not a good name. If your name tricks a customer into a belief that they are buying from someone else, it goes against the very idea of trademark: it should tell consumers where the good/service comes from.
Similarly, if your brand name simply tells what the good/service is, it’s not a good name. It should tell where it comes from, but not what it is.
Tips for good naming
I digress. This article is actually about how to give a good name. All I said so far is how to avoid bad names.
So, here are some hacks.
This is probably all too familiar. Our example “Awerigional” is indeed a tweak of “original” using awe- instead of “o”.
If you are fond of a certain word or common name, you can add suffixes to it for extra distinctiveness. If I were to use my name “Jeon” for a trademark, I would soon realize there are more than 500,000 people with the same name in South Korea alone.
However, Jeonish, Jeonastic, and Jeonity are all pretty distinctive and easy to remember names if you’re already familiar with the “Jeon” name.
Make it simple
A catchphrase is very attractive, but it does not go far legally. It’s not to say that you can’t have a phrase registered as a trademark. In fact, it’s often easier to have a phrase registered than a word.
However, when it comes to trademark protection, it should not just protect against identical copycats but also against similar rip-offs. As phrases often convey a meaning, your competitors can easily claim that they’re just using the phrase for the meaning.
So, “it’s so deli-cious” is never be a good name for your delicatessen however tempting.
Use it properly
My final advice has nothing to do with naming. Nonetheless, if you’re using a good name the wrong way, it would be shame.
Don’t refer your product/service by just the trademark. For example, don’t call your specialty raisin bread Aweriginal. It should be Awriginal raisin bread. It’s true even if no other bread in your bakery is called Awriginal.