Thursday, February 18, 2016

“Arbitrary” Legal Thoughts: Picking a Trademark

One early hurdle that Entrepreneurs frequently think they sail over occurs when they settle on a trademark.  Then trouble frequently sets in.  

Besides potentially choosing a mark that infringes a preexisting mark (see our Trademark Search First, Then Brand article), a tendency exists for Entrepreneurs to pick weak terms for their marks.  

On that note, trademarks exist along a spectrum of strength.  On the weak end you will find generic and/or descriptive terms.  An extreme example is a hardware store named “The Hardware Store.”  Obviously, if we allowed anyone to register such phrases, commerce would grind to a halt as the first registrant for each type of business gained the right to stop everyone else from advertising using such descriptive phrases.  Similarly, words such as “best,” “prime,” and the like lend little to the strength/registrability of a mark in most situations.  

Potentially strong marks exist on the other end of the spectrum where the marks are fanciful or arbitrary.  A fanciful term can be described as one that would not ordinarily be associated with the goods with which it is used.  For instance, before Steve Jobs, few consumers would have associated the term “Apple” with computers.  

Similarly, arbitrary terms can be described as those that are made up.  “Google” springs to mind for use with search engines.  Except for the mathematical term “googol” the term google had not been heard of before the founding of the company by that name.  And as an arbitrary mark, Google is a strong mark (even before accounting for the large sums spent on branding that term).  

Accordingly, Entrepreneurs should strive to create arbitrary or fanciful marks for their goods and services and should avoid using descriptive and/or generic terms in (or at least as the heart of) their trademarks.

We at the Villhard Patent Group would enjoy the opportunity to discuss your proposed trademarks with you (along with your other IP related issues).  For more information about us, see or call us at (512) 897-0399.  Also, if you are an Entrepreneur, feel free to join us on the evening of the second Thursday every month for the Entrepreneur IP meetup.

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