How to Select a Trademark

Selecting or creating an appropriate trademark is a critical step in the marketing strategy of a business.

Five-point checklist for selecting a trademark

• Check that your mark meets all the legal requirements for registration;
• Conduct a trademark search to ensure that it is not identical or confusingly similar to existing trademarks;
• Make sure the trademark is easy to read, write, spell, and remember and is suitable for all types of advertising media;
• Make sure the mark does not have any undesired connotations in your own language or in any foreign language of potential export markets.
• Check that the corresponding domain name is available for registration.

Not acceptable for trademark protection

• Generic terms
• Descriptive terms
• Deceptive marks
• Marks considered to be contrary to public order or morality
• Flags, armorial bearings, official hallmarks and emblems of states and international organization.

Trademarks can be categorized on the following spectrum of strength or distinctiveness [high to low …]:

• Coined or fanciful words.  Words without any real meaning have the advantage of being easy to protect as they are considered inherently distinctive. On the negative side, they may be more difficult to remember for consumers.
• Arbitrary marks. These are words that have a meaning having no relation to the product or service they promote.  While these marks will also be easy to protect, they may require heavy advertising dollars to create the association between the mark and the product or service in the minds of consumers.
• Suggestive marks.  These are marks that hint at one or some of the attributes of the product/service.

It is important to avoid imitating existing trademarks.  A slightly altered competitor’s mark, a foreign translation, or misspelled mark is unlikely to be registered.

Legal guidance can be invaluable and will help avoid costly mistakes.