What are the best practices in choosing and using a mark?

1. Don't choose a mark that is confusingly similar to another mark.

Trademark law is generally protective of "prior users" of a mark. When you file for a federal trademark registration, the examining attorney will determine whether your mark (taking into consideration the goods and/or services for which it is used) is close enough to a prior registered mark that it would likely confuse consumers. If so, the examiner will refuse registration.

A likelihood of consumer confusion is based, in part, on similarity in sight, sound, and meaning, and taking into consideration the goods/services of both marks.

It is often not sufficient to simply search for your exact mark on the USPTO website, and if you don't find that exact mark, conclude that your mark can be registered. A mark that is one letter off (or a few letters off) can prevent you from registering, and yet it can be difficult to find all of these other marks if all you do is search for your exact mark. Additionally, the goods and services for which a mark is registered have an effect on whether the marks are likely to be confused.

For example, assume you want to register the mark GLADIATOR for motorized bicycles, and assume that there is a prior registered mark GLADIATOUR for tour vans. If you simply search for the mark GLADIATOR on the USPTO website you may not encounter the GLADIATOUR mark at all, and so may be surprised when, after you file an application, the examiner rejects your mark based on the GLADIATOUR mark. Additionally, whether or not the marks are likely to cause consumer confusion is based partly on the goods and services for which they are being used. In this case the GLADIATOUR mark is being used for tour vans, while the GLADIATOR mark is being used for motorized bicycles, and there may be arguments that could be made to convince an examiner that, because of differences in the goods, the marks are not likely to be confused by consumers.

2. Choose a mark that is inherently distinctive.

Some marks are inherently stronger than others. When selecting a mark to use for your goods or services, consider that the "strength" of a mark falls along the following spectrum (beginning with the strongest): Fanciful, Arbitrary, Suggestive, Descriptive, and Generic.

Fanciful Marks - A fanciful mark is a mark that has no meaning apart from its use as a mark and that does not inherently suggest or convey to the mind of the consumer what the goods or services might be. An example is KODAK used for camera related goods.

Arbitrary Marks - An arbitrary mark has a common meaning outside its use as a mark, but its use as a mark has no relation to the common meaning. An example is the mark APPLE used for computer and phone related goods.

Suggestive Marks – Suggestive marks do not immediately convey the meaning of the goods or services for which they are used, but they suggest them to the mind of the consumer. An example may be SQUEAKOZ! for pet toys that make a squeaky noise.

Descriptive Marks – These are marks that merely describe something related to your goods or services. For instance, the mark LITTLE RED PILLS for cough medicine in the form of small red pills could be considered a descriptive mark. Descriptive marks are not considered inherently distinctive, and because of this, cannot be registered on the principal register until they have “acquired” sufficient distinctiveness through use of the mark and by consumers beginning to recognize the mark as an indicator of certain goods/services.

Generic Marks – Generic marks are marks that are incapable of serving a trademark function because they are the common or generic name for the goods or services. For example, you cannot register the word IBUPROFEN for ibuprofen pills because it is the common name for the goods.

In general, the higher up the spectrum your mark is, the stronger your mark and the more likely it will be “distinctive” enough to merit registration, all other considerations aside. The first three categories: Fanciful, Arbitrary, and Suggestive marks, are considered “inherently distinctive.”

There is often a tug-of-war between a company’s marketing team and its legal team when it comes to trademarks. The marketing team wants to choose marks that immediately convey the idea of the goods or services to the mind of consumers, while the legal team prefers marks that are stronger and more easily protected. In general, we suggest that stronger marks (Fanciful, Arbitrary, and Suggestive) are capable of conveying the idea of the goods or services to the minds of consumers as they are continually used (similar to how the word APPLE and KODAK now immediately convey to the minds of consumers phone and computer related goods and camera and printer related goods, respectively). However, if some middle ground must be found, we suggest choosing marks that are suggestive of the goods or services instead of being merely descriptive of them.

3. Use your mark as an adjective, never as a noun.

On your website, and in all your marketing and promotional materials, you should never use your mark as a noun, but only as an adjective. For example, if your mark is SQUEAKOZ! for toys that make a squeaky noise, your website and promotional materials should never say things like “buy your pet a SQUEAKOZ!” but, instead, should always include a descriptive noun next to the mark such as “buy your pet a SQUEAKOZ! toy.” When you use the mark as a noun you are using it in a descriptive way, and this can reduce the strength of your mark. It may also lead the examining attorney to reject your mark. We have seen an examining attorney look at a trademark applicant's website and, upon finding that the applicant was using the mark as a noun, reject registration on the principal register on the basis that the mark was merely descriptive of the goods or services.