Creating Your Trademark:

What to do and what not to do...

Remember that your Trademark is an indication of the source of goods or services

It is not the name or description of a specific thing, as such, nor is it necessarily the same as your company name.

Be sure to use your mark correctly!

It is very important that a mark be used correctly, so that the mark's character is preserved. This is sometimes stated as "a trademark is an adjective, not a noun or verb."

That is, to use several famous examples:

 It isn't really necessary to clutter up every piece of text with the symbol every single time the mark is used - you just need to give "adequate notice" that you consider the word, phrase, etc., to be your mark. Certainly the symbol should be used the first time a mark is used in a document or label, and occasionally thereafter. 

Some manufacturers put a note on each label or document listing all of the marks on the label or document, and noting the trademark ownership ("Scotch® and Magic Tape® are Registered Trademarks of 3M Corporation"). On a website, many companies with large portfolios of trademarks will have a separate page which lists all of the marks - for example, see Google's "Our Trademarks" page. 

By the way, the Owl logo on these web pages, and the phrase "Our knowledge protects yours" are registered service marks of Brown & Michaels, PC.

Never let your mark become "generic"

A generic mark is not really a trademark, but is simply the only way to refer to a product. Becoming generic is one possible result of using your mark incorrectly. You cannot stop your competitors from talking about their products by pre-empting the name of the product. Thus, if a mark is not used correctly, so that it becomes the name of the product rather than the source of it, there is a risk of the mark being declared "generic". Otis lost the trademark "escalator" for that reason, because they advertised "the latest in elevator and escalator design", and a court ruled that if they themselves used the mark generically, so why shouldn't their competitors?

Many manufacturers who find that their brands are becoming generic (or fear that they might be), will run corrective advertising reminding the public not to use their trademarks incorrectly. For example, Xerox Corporation ran magazine ads with the headline, "Not even Xerox can make a xerox" or "Here are a list of photocopiers you can't make a xerox on..." (followed by a list of photocopier brands, including Xerox® copiers). 

Companies should also try to take positive steps if they find others using their marks in a generic way. Often a simple e-mail will get a reference on a website corrected. Google has a program (with varying degrees of success) challenging publications which use or define google as a verb or talk about googling something. 

Some examples of marks which started out as trademarks, but have become generic (at least in the USA) are:

Be sure to use your mark consistently!

When you decide on a mark, you should also decide how you want to present the mark - and then do it consistently from the very beginning. If you are not consistent in your use of the mark, you are weakening the mark because you are lessening the likelihood that consumers will recognize the mark and associate it with your products. You will probably want to set up at least a brief written style sheet to guide your employees and contractors in the right way to display your mark. 

Some of the things to consider:

If you use someone else's trademark be sure to acknowledge their rights.

That is, if you talk about "Teflon®", be sure there's a disclaimer somewhere that "Teflon is a registered trademark of DuPont." 

The "BIC man" character at right is a registered trademark of Bic Corporation.

Before you begin to use a mark, choose it carefully and be sure you're not infringing on someone else's mark.

A trademark search is a basic first step for anyone considering adopting a new trademark or service mark. With today's computerized databases, a trademark search is relatively inexpensive and fast, and cheap insurance against having to change your mark or defend a lawsuit later. We recommend that you start by doing a preliminary search yourself. Then, when you've settled on a mark you think is OK, confirm it by having a professional search done. 

See our Trademark Budget Estimator for our fees for trademark searching. If you have a trademark search done by a service, be sure it includes Federal and State Registered Marks, at a minimum, and an opinion on the results.

You should not stop with registered marks, either - check out the World-Wide Web search engines and yellow-pages listing to find anyone using the mark who has not (yet) registered. You wouldn't want to spend a fortune adopting and promoting a mark nationwide, only to find out that a competitor has prior use rights.

The test of a mark is "likelihood of confusion" - that is, is the proposed mark so close to an existing mark that it is likely to confuse the intended consumer as to the source of the goods? If there is any question, play it safe and try another mark (or consider contacting the prior user and getting his OK, if you really want to use a mark which might be a problem).

Choose the "strongest" mark possible.

Marks vary in strength over a spectrum from a coined or invented mark, which can be very strong, through generic marks, which are not really trademarks at all. The stronger a mark is, the broader the protection it is afforded.

It's been our experience that most people choose marks which are very weak and, in general, forgettable. Marketing departments dearly love generic marks, and can't understand why we would advise against "Raspberry Beer" as a mark for beer made with raspberries (yuck!). "Michael Shea's Irish Amber" (an actual trademark of the Genessee Brewing Co.) is much more distinctive and memorable than "Pretty Good Beer" would be.

There are lots of sources for good marks - look in an encyclopedia or dictionary, or to mythology or geography or history, for words whose connotations are positive and appropriate to your product. "Midas" implies wealth (for mufflers? Must be a connection somewhere), "Hercules" for strength (registered for rope since 1870, among 198 other things), "Mercury" for speed (FTD florist symbol or boat motors), the Rock of Gibraltar for permanence (used by Prudential Insurance), "George Washington" for honesty (broth, apples, many others), "Obsession" for emotional appeal (a perfume brand), and so on.

Coined marks can be very strong and valuable, and you can make them sound as if they mean something when they do not. Consider "Häagen-Dazs" ice cream (an all-American product made in New Jersey, but sounds ever so Scandinavian), or the Oldsmobile "Achieva" or Compaq "Presario" (sounds elegantly European, but are meaningless), or "Exxon" gasoline (a purely coined mark slightly reminiscent of their former "Esso" mark, and without the "S.O." [Standard Oil] derivation).

If you are planning for a line of products, consider choosing a mark which lends itself to becoming a "family" of marks. For example, Kodak has a wide variety of marks beginning with "Kod", as in "Kodell" for fabrics, "Kodalux" for processing, "Kodachrome" for film, and so on.

Avoid these Marks!

Some marks, otherwise valid, are either prohibited by law or convey no rights. These marks should be avoided:

Mouse ears are a registered trademark of Walt Disney Company

Watch out for pitfalls...

Registering Your Mark

Marks which are in use in interstate or foreign commerce (i.e. are sold over state lines, or between the U.S. and foreign countries) may be registered in the U.S. Patent and Trademark Office. Such registration conveys a number of advantages, not the least of them being actual nationwide notice to possible infringers. Registration allows the trademark owner to use the (r) symbol, to sue in federal courts, to recover damages, profits and costs from an infringer, and conveys a presumption of validity to the ownership and right to use the mark. After 5 years of registered use, the mark may, upon application, be declared incontestable. Federal registration also allows you to file for registration in other countries.

You may apply for a trademark registration either before or after you use the mark, but a registration will not be issued until the mark is actually used. The registration is effective for 10 years, but may be renewed over and over for so long as the mark continues to be used. See our "Questions and Answers on Trademarks" for more information on registration.

Last updated: Tue, 16 Feb 2021