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Selecting a trademark: a brief look at some considerations

News and Notes Focused on the 3 Public Faces of IP Law

  • Brand Image Protection - Trademark Law
  • Visual Image Protection - Copyright Law
  • Personal Image Protection - Right of Publicity Law

The Image Protection Law blog has been created in order to share stories and information on the legal aspects of: 1) the marketplace reputation of a company or product captured in its trademark, 2) published or publicly-displayed artwork, photography, and any created visual design, and 3) use of a person's photograph or likeness for product promotion or other commercial purposes.

The "IP3" share at least one thing in common: Image is everything. In these posts let's look at what that means in the realm of intellectual property in the news, but let's also be prepared to explore if there's something more beyond "everything." Don't forget, the intellectual in "intellectual property" doesn't mean smart or brainy, although by nature true creators often are. The word is used to refer to any creation, i.e., a "product of the mind." While this blog will be regularly updated, you are encouraged to share your thoughts on these posts.

Branding is critical for the success of businesses in many industries, and trademark protection is an important area of law for businesses to understand when it comes to branding. Trademarks can be highly valuable, and can help propel a business into greater success when carefully selected and protected. But what exactly is a trademark?

A trademark is some type of indication--whether a word, phrase, symbol or design--which distinguishes goods produced by one source from those produced from another source. Service marks are the same, except that they refer to services rather than goods. The USPTO, the United States Patent and Trademark Office, registers marks but it does not protect them. Protecting trademarks is the responsibility of trademark owners. Selection of a trademark requires careful thought and planning, as there are various factors that need to be considered to ensure the trademark is valid and effective. 

One consideration to achieve trademark protection is the likelihood that a specific mark will be confused with other marks. This, in fact, is the most common reason registration is denied to applicants. This can occur when the marks are sufficiently similar--whether in sound, appearance, meaning or commercial impression--and the goods and services are sufficiently related that consumers are likely to believe they come from the same source. Similar or even identical marks can potentially coexist, as long as the goods or services are not related. It is important for applicants to conduct a thorough trademark search before seeking trademark protection to determine whether there is any potential conflict with an already existing mark identifying related goods and/or services.

Another factor to consider is the strength of the mark. Marks which are generic are not protectible and are free for anyone to use, while descriptive marks are weak since they function primarily to describe, not distinguish source. On the other hand, marks which are suggestive of the goods and services offered are strong, and marks which are fanciful or arbitrary are considered to be the strongest marks since they are the most "inherently distinctive." Choosing a strong mark can help prevent legal disputes down the road, which can save a business money.

Trademark registration may be refused for these and various other reasons. In addition, to these factors, though, there are also practical issues to take into account when selecting a trademark, such as the aesthetic value of the mark and the ease with which the public will remember it. The ultimate goal is to make the brand of a business stand out, but careful consideration of the mark is critical.

In our next post, we'll continue looking at this topic, including a recent trademark dispute involving a California business, and the important role an experienced attorney can play in resolving trademark disputes. 

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