TRAVERSE CITY – There are a few general rules of thumb to keep in mind when choosing a new mark. The mark should be short and distinctive, generally three syllables or less. The new mark should be easy to spell, pronounce and remember.

The mark should not carry any negative connotations, either toward the new product or service or any segment of the purchasing public. On the other hand, laudatory words such as Superior, or any other words known to be in common and widespread use, should be avoided, since it may be difficult or impossible to develop any exclusive rights in such a word.

By adopting a Trademark, you are trying to have the public identify you with excellent services or products. You are trying to distinguish your products from those of your competitors, and should therefore avoid the use of any words that others may want to or have to use in describing products or features, and instead select marks that are arbitrary or coined. A good example of a coined mark is ?Pentium.? which is completely arbitrary when applied to processors, but has become a very strong mark through advertising.

You should generally focus on gaining public recognition, as well as distinction from competitors. Shorter, ?snappier? marks make it easier for you to be identified with excellent products or services, and the marks will be much easier to protect.

What about descriptive marks?

A word which merely describes a product or service is often too weak to function as a trademark. A merely descriptive mark, such as Cycle Cooler for motorcycle oil coolers, may have instant sales appeal since it immediately conveys the desirability of a product. However, such descriptive words are not, at least initially, protectable as trademarks, since competitors may need to use those words to describe their product.

It is possible for what is initially a descriptive word to become protectable later as a trademark if it develops what is termed secondary meaning. In other words, if a descriptive word is used exclusively as a trademark for a number of years, it may come to have a meaning in addition to the primary meaning, which is descriptive of the product.

Surnames and geographic words can encounter the same problems in protectability as descriptive words, since there is a reluctance to allow any one person to claim exclusive rights in a surname which is also the name of other persons, or in a geographic name for a locale in which others offer competing goods or services. It is possible for a surname to become a trademark if, after years of promotion and use, it acquires a secondary meaning. Such surnames as Scott (for paper products) and Johnson (for wax products) have been found to have secondary meaning.

A geographic word can serve as a trademark if the locale it identifies is not known for the goods or services for which the mark is used, and use of the word is not likely to deceive the public as to the geographic origin of the goods or services. Thus, while Nantucket has been found to be a valid trademark for shirts manufactured elsewhere, Maid in Paris, for a perfume not produced in Paris, was found to be deceptive, since Paris is known for perfume and persons viewing the mark might believe the perfume actually came from Paris.

Generic Words

At the opposite end of the spectrum from coined or arbitrary marks are generic words, words that are so inherently descriptive of a product or service as to be incapable of ever functioning as a trademark. Generic words can be thought of as the common name of the product or service, such as cologne, lawn mower, grocery store and golf ball. Generic words can never be appropriated by a single party as trademarks, since the public perceives and uses such words as common nouns/terms. As a result, competitors should be free to name their products with the same generic words.

Another category of generic words are words which at one time were valid and protectable marks, but which ceased to function as trademarks when they became viewed by the public as the common product name. As soon as trademarks are found to be generic product names, they become available for use by everyone (e.g., escalator, aspirin, kleenex, cellophane, thermos and yo-yo). This evolution from trademark usually results from the commercial success of the trademark combined with improper use of a trademark by its owner. In short, if a trademark becomes the common term for a good or service, and the owner of the mark acquiesces or encourages such use, the once-protectable mark becomes a generic word.

Contact attorney Sandy Franklin with your trademark questions by emailing her at [email protected]

Or telephone Franklin at (231) 929-3001. Franklin is a member of the glimaNorthwest board.