Trademarks—the identifying marks by which consumers associate products or services with a particular source—can be among your most important assets.

    If properly selected, managed and protected, your trademarks will create valuable goodwill for your products or services. Your trademarks can help distinguish your goods and services from those of your competitors, promote sales by causing consumers to identify your trademark with products and services that offer value, are of consistent quality, or other desirable characteristics. Generally speaking, your trademarks can be words, names, symbols, slogans, logos, taglines, designs—even colors or smells—that are used in connection with your products or services.

    When selecting a trademark for a new product or service, keep the following points in mind. First, a trademark should be memorable–it needs to be capable of attracting the attention of a potential customer. Second, a trademark should elicit a desirable response in the minds of as many consumers as is possible.

    Not only should you consider how your current customers will react to the mark, but you also should consider how customers in other markets will react to your mark when and if you expand. For example "Tacos on Tatum" might be a fine name for a taco shop on Tatum Street, but what name will you use when you are ready to open a second shop on a different street? Why not choose a name that will allow your concept to expand into other markets without abandoning the initial goodwill developed under your mark? Similarly, avoid marks that are likely to offend or simply not appeal to purchasing sub-groups (religious, ethnic, gender or otherwise). Query whether selecting the name "Nova" for a line of Chevrolet automobiles caused General Motors Corporation to lose sales among Spanish-speaking customers—"no va" is Spanish for "won’t go."

Fanciful or Generic?

    In addition to the above, keep in mind the following concept: trademark law protects trademarks on sliding scale. Fanciful or coined marks are considered "strong" marks—i.e. they are the most protectable. Descriptive or generic marks are "weak" marks—i.e. they are the least protectable, if protectable at all. This sliding scale is graphically represented as follows:

Fanciful. Fanciful marks are marks that lack a dictionary meaning but instead have been invented solely to function as a trademark. INTEL^®, ACURA^®, and APTIVA^® are excellent examples of fanciful marks that also carry a positive connotation.

Arbitrary. Arbitrary marks include words that have a common meaning, but are used in connection with products that have no relationship to the common meaning. APPLE^® is an arbitrary mark—and quite protectable—when applied to computers and related equipment. Comparatively, the word "apple" is not arbitrary--and quite unprotectable, when applied to a certain shiny red fruit.

Suggestive. Suggestive marks include marks that suggest the associated product or service, but stop short of describing it. WORDPERFECT^® is an example of a mark that both carries a positive connotation and is also suggestive for word processing software. Although suggestive marks are generally protectable, the protection afforded a suggestive mark is often described as "weak."

Descriptive. Descriptive marks include marks that merely describe the associated product or service. U-HAUL^® is descriptive for a self-moving rental service. As a rule, descriptive marks are protectable only after a substantial investment in advertising and promotion causes potential purchasers to recognize the mark. Absent this extraordinary showing, a descriptive mark is practically unprotectable, and the United States Patent and Trademark Office will not register the descriptive mark.

Generic. Generic marks are incapable of functioning as trademarks. "Word Processing Software" is and always will be generic—even if you hyphenate it, change the spelling, or cleverly omit the spacing between the words!