1. Trademarks vs. Tradenames:     

Before you begin the process to select a trademark it is important that you understand the difference between a trademark and a trade name.

In short, a trademark is a word, picture, symbol, sound, phrase, slogan or smell which is used with or associated with a good or service to distinguish a business’ good or service in the market place.  It is NOT the formal name of a business which is called a trade name.   It should be understood that a business may adopt its trade name as a trademark

2. Should the trade name of a business be adopted as a trademark?

It depends!!! 

The use of a trademark and a business name is usually an issue with small companies that sell only one good or service.  For example, if I open an auto repair shop and advertise it as CRAINE’S AUTO REPAIR, I’m using the name both as a trade name and as a trademark   If I open a manufacturing company and call it CRAINE’S MANUFACTURING, and only advertise and sell products under different trademarks, (CRAINE’S GIZMO or CRAINE’S WIDGIT),  then CRAINE’S MANUFACTURING is used only as a trade name.  The names of the products that the business sells and advertises are trademarks.  Generally, when you select a trademark, you first need to determine if the business will sell a single good or service or multiple goods or services.  If the business will sell multiple goods or services, then I do not recommend that you use the business name as a trademark.  Instead, you should plan to create separate trademarks for the different products.

3. How do you protect a trade name?

The name of a business serves to identify the name of the business in the business world. Most states require that a business have a name.  Which name a business uses is controlled by the state where the business is formed.  For example, corporations, limited liability companies and partnerships may have use specific terms in their names.

Generally, formal businesses, such as corporations, limited liability companies, partnerships, non-profit organizations, religious and educational institutions and others, must register their names with the city, county and state offices.  Informal businesses must register with a city, county or state office that records fictitious or assumed names.

4. If the name of a business is recorded with a city, county or state office, do you have the right to use it for all purposes?

NO.  The recording of the business name with the city, county, or state office only satisfies the local business recording rules.  It doe NOT, give you rights to use the name as a trademark and does NOT protect you against claims for trademark infringement  by others.

5. Do you recommend that a trademark search be conducted for business names?

YES

6. How do trade name disputes occur?

Trade name disputes occur when two trade names are used by businesses that are so similar that customers will be confused.  If a trade name is being used only to identify a business and not as a trademark, the customer confusion should not occur. Unfortunately, most business use their trade names as a trademark which leads to disputes.  I recommend that all businesses assume that their trade name will be used a trademark and conduct the appropriate amount of research and investigation before selecting a trade name.

7. What makes a good Trademark?

1:        Select formatives that are short, easy to pronounce and suggestive of some positive aspect or characteristic of the product or service;

2:        The formative should imply some of the important characteristics or message considered a novel feature(s) of the product if a patent has been submitted;

3:        It should be unique to the industry and should be non-generic;

4:        Consider using alliterations;

5:        Can it be abbreviated?

6:        Consider translations;

7:         Is the mark used by another company in a different industry and how aggressive is the other company?

8. Terms used to describe the formatives that make up a trademark

• Descriptive (Best Foods)
• Traditional (National Car Rental)
• Suggestive (Jiffy Lube)
• Coined Classical (Xerox)
• Classical (Lycos)
• Family Name (Dell Computers)
• Tonal (Google)
• Abbreviation (AOL, AT&T)
• Truncated (FedEx)
• Joined (Microsoft)
• Foreign (Haagen Das)
• Geo Graphic (Cascade Alarm)
• Object Based (Visa)
• Color (Green Giant)
• Size (Green Giant)
• Playful (Yahoo)
• Verbal (Sprint)
• Adjective (The Daily Show)
• Numerical (7-11)
• Futuristic (Infiniti)
• Character Based (Mr. Goodwrench)
  

The key aspect you must know is that the trademark must be distinctive. The more distinctive it is the more effective it is as a trademark and the less likely it is to be disputed. There are three basic distinctive categories - coined, arbitrary and suggestive.

1:        Coined trademark: are those which are made up and have no meaning. Examples include TYLENOL, ARCO and KODAK.

2:        Arbitrary mark: is an ordinary word that is used in an unexpected or arbitrary way so that its meaning has nothing to do with the nature of the product or service they identify. APPLE COMPUTERS is an example of an arbitrary mark.

3:        Suggestive mark: is an ordinary word that creates a desirable quality or feeling about the product or service but is not descriptive. QUALITY INNS is an example of a suggestive mark.

In summary, when selecting a trademark, it is advisable to first consider coined words, suggestive words and arbitrary words. It is advisable to avoid generic or highly descriptive words, personal names, geographic words, words that have negative connotations, and words that conflict with other trademarks used in the same or related market areas.