CLEVER CAUTION...THE DO’S AND DON’TS
OF CHOOSING A BUSINESS TRADEMARK

A clever name, logo, or phrase goes a long way toward identifying your service or product in the marketplace. You can protect company “trademarks” by registering them with the United States Patent and Trademark Office. However, the rules governing registration of trademarks can limit your choices.

Protectable Trademarks

Protection for a name, phrase, or logo as a trademark requires actual use in connection with goods or services. Customers or clients should identify goods and services with the trademark.

Protectable trademarks must be inherently distinctive or have acquired secondary meaning. Coined or fanciful words like CLOROX for bleach or KODAK for cameras are distinctive because they have never been used for another purpose. Words like TENDER VITTLES for cat food may have meaning in other contexts but they have acquired a distinctive designation for the product. The same concept applies to phrases such as “YOU’RE IN GOOD HANDS WITH ALLSTATE.” The phrase itself contains a series of common words. But when used in conjunction with each other and the company name, they have acquired a secondary meaning. Common words such as “soap” or “milk,” cannot be registered as trademarks because they are truly generic.

Words that once may have been trademarks sometimes become generic. For instance, “aspirin” was a protectable trademark at the very beginning of its use. But the Bayer Company allowed the word to be used as a term for all pain relievers…and thus, the word became a generic term for pain relievers.

Additionally, certain other types of words cannot be legally registered as trademarks. Banned terms include immoral or scandalous words, words that may indicate a false connection with the goods or services, deceptive words, disparaging words, flags, insignias, coats of arms, a name, a signature, false designations of origin using a geographic term, functional features, and ornamentation.

The Dos and Don’ts of Trademarks

Given these rules, how does one choose a protectable company trademark?

• Do use coined words or phrases that have no prior meaning. Example: MICROSOFT for computer software applications.
• Do use arbitrary or unrelated words for the product. Example: DOMINO’S for pizza.
• Do use terms that suggest the nature of the product or services. Example: COPPERTONE for suntan lotion. (But be sure that no one else is already using the term as a trademark.)
• Do use terms that describe the product, but you will have to prove that your customers or clients have recognized the term with your product thus creating secondary meaning. Example: KRISPY for crackers.
• Do use fonts and colors in your trademark to further distinguish your goods and services from others.
• Do use slogans that describe your product. Example: DAN RIVER DESIGNER FABRICS for textile fabrics.
• Don’t use any of the prohibited trademarks as we have described above.
• Don’t use a trademark that conflicts with someone else’s trademark. Example: SMALL STREET JOURNAL versus WALL STREET JOURNAL.
• Don’t use a trademark that would confuse customers regarding origin of the product. Example: GOLDEN GRIDDLE for a pancake restaurant where someone already has registered GOLDEN GRIDDLE for table syrup.

Conclusion

Keep this short list of “Do’s and Don’ts” in mind and your trademark will distinguish your product or service from your competitors…with running any risk of breaking basic rules.