Choosing the Right Trademark

When you are selecting a mark for a new service or product, it is important to remember that generic marks are given no legal protection. The law is that everybody is entitled to use the generic word for a product or service.

Similarly, descriptive terms are given very little legal protection, unless you can prove that the public has come to associate the mark exclusively with your product or service. Proper names and geographic locations are, by law, considered descriptive, as are any descriptive words. Misspelling these words or puffing them in a foreign language will not solve the problem. Therefore, marks like "ChemLawn" for a service which treats lawns with chemicals is inherently a weak mark, which will be given little legal protection.

Businesses can spend lots of time and money trying to protect weak marks, often without success. While the temptation is great to use a mark that is descriptive, you should know when you choose a descriptive mark that you may not be able to protect it. If you want to be confident that your advertising dollars are going into a mark that can be protected, your best move is to choose a mark that is not generic or descriptive. A strong mark can be a coined word or phrase with no meaning or a word or phrase that is only suggestive of the product or service (without being descriptive). The simple choice of a strong mark when launching a new product or service can have enormous value to you over the long term. The best possible arrangement would be to get your marketing person and your attorney to work together in selecting a mark that will sell well and that can also be protected.

Some examples of non-descriptive, strong marks are: "Exxon" (gasoline), "Jaguar" (cars), "M & M's" (candy), "Juicy Fruit" (chewing gum), "The Gap" (clothing), and "7-UP" (soft drinks).

So, the next time you launch a new product or service, be clever and creative and take some care in choosing the mark. It may well become your most valuable asset.