By: Jeffrey G. Sheldon, Esq.

howtopickatrademark-e1478836431363The most important factor in choosing a mark is whether it helps to sell.  Once you come up with a list of candidates, consider the following factors:

  1. Is the trademark available?  Does someone else have the same or similar mark so that there is a likelihood of confusion, or is it a famous mark protected against dilution?  Generally a search is needed to answer that question.  And for trademarks to be used in foreign countries is the mark available in those countries?
  2. How distinctive is the trademark?  Is it merely descriptive of the goods or services, or is an arbitrary term (such as Apple for computers, or fanciful such as IPAD)?  The more distinctive a mark, the easier it is to protect against infringers.
  3. For marks that will be used in foreign countries, what does the mark mean in foreign languages?  For example, should you use “apesta” for pasta?  No!  That is an unsatisfactory mark for Spanish speaking markets because it means “stinks” in Spanish.  The flip side to consider for foreign language words in a mark, is whether there are negative connotations in the English language.
  4. Is the domain name available?  It is desirable that the principal mark of a company also be available as a domain name since so much marketing is done via the internet.

There are many marketing consultants, public relation firms and the like that can assist in selecting trademarks.  A low cost alternative that has worked for many start-up clients is:

  1. Invite good friends to a bar for choosing a mark.
  2. Pay for the drinks.
  3. Have the friends brainstorm for suitable marks.
  4. Stay sober and write down all the suggested marks.
  5. Pick one the next day.

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