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Five Costly Mistakes to Avoid in Choosing a Trademark

Tips from a Patna based Trademark Attorney.

You have selected your new Trademark, Service Mark or Business Name and have paid marketing and

advertising professionals handsomely for their services. You have also spent money for air time, print

media, catalogs and brochures to advertise the benefits of your new products and proudly displayed

your trademark. When you finally speak to a trademark attorney to protect your trademark rights, you

receive bad news: your Trademark is not protectable or enforceable and your competitors can freely

use your mark to describe and sell their products.

The Rooi os Trade ark ase illustrates h our Trade ark Attor e should e i ol ed in the early

stages of Trade ark or usi ess a e sele tio . Rooi os as used o tea produ ts a d as registered with the USPTO for many years and was purchased by an unsuspecting business. After

numerous costly court battles in an attempt to protect and enforce the trademark, the registration was

a elled e ause Rooi os is the ge eri a e for the pla t used to ake the tea produ ts. To decrease the possibility of making such a costly mistake, we suggest that, at the very least, these

guidelines be followed:

1. Consult with a Trademark Attorney: It is very important that you consult with a Trademark Attorney

that has extensive Trademark Registration Experience in the early stages of the process. You should not

assume that an Attorney is experienced in Trademark Law. One thing you can do is to look them up on

the CGPDTM’s e site, www.ipindia.nic.in to make sure that they have previously registered

numerous trademarks or you can ask for such detailed evidence for your better confidence.

2. Strong Trademark: The Trademark Attorney will be able to help you navigate through the

Trademark Strength Spectrum to select a Strong, Protectable Trademark. It is best to select a

Trademark from categories (A) through (C) listed below, with (A) and (B) being the easiest to register

and protect.

A. Fanciful Trademark: Strong. A Fanciful Trademark is a made up word that only functions as a

Trademark or service mark. Pepsi® and Xerox® did not exist in any language before they were chosen

as Trademarks for drinks and copy machines.

B. Arbitrary Trademark: Strong. An Arbitrary Trademark is a word that exists but has no meaning when

used o the produ t itself. Apple, he used o o puters is a “tro g Trademark e ause it does ’t describe a quality or characteristic of the computer.

C. Suggestive Trademark: Strong. A Suggestive Trademark is a word that, when applied to the products

or services, requires imagination, thought, or perception to reach a conclusion regarding the nature of

those goods or services. Greyhound® for bus services is a Suggestive Trademark because a customer

has to use imagination to conclude that the bus travels as fast as a greyhound dog.

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D. Descriptive Trademark: Not Strong. A descriptive Trademark immediately conveys information

regarding an ingredient, quality, characteristic, function, feature, purpose or use of the product or

service. While it is tempting to select a descriptive mark because of the ease in recognition of the

goods or services provided, they are only protectable if used and advertised over a period of time so

that consumers associate the mark with the good or service with which it is used. Honey-Baked® for

hams and No Spot® for a car wash system were initially deemed descriptive of the products and

services.

E. Generic: Weak and Unprotectable. Generic Terms or Common Words for the products or services

cannot function as a Trademark because it would prevent others from rightfully using the common

name for the product or service that they make. Super Glue, after a costly court battle, was deemed

generic when used on a strong, rapid setting glue and not entitled to Trademark Protection.

3. Trademark Search: No Conflicting Trademarks. Once you have selected a few Strong Trademark

Names, the next step is to clear the Trademarks by Searching Registration Records to make sure there

are no previous Trademark Right Holders that would prevent your use. There are many traps for the

unwary, for example, a previously Registered Trademark does not have to be identical to your

Proposed Trademark to prevent your use. Blue Shield® and Red Shield, for example, have been held to

be confusingly similar and the courts ordered that Red Shield not be used for insurance services.

4. Domain Name Availability: I toda ’s te h ologi al orld, ou ha e to ake sure that the .com

e te sio is a aila le for our Trade ark. Do ’t use h phe s i our do ai a e e ause that ill se d our traffi a d usto ers to a other site. Also, do ’t isspell o mon words because that will

unintentionally direct your traffic and customers to another site. You should also register the .net and

.org extensions for your Trademark to reduce the possibility of cybersquatters registering your domain

name with those extensions.

5. Register Your Trademark: You need to properly and quickly register your Trademark with the

CGPDTM in order to receive the most protection for your investment and to develop the valuable asset

that you have just added to your business. Your experienced Trademark Attorney will be able to

properly register your Trademarks and avoid many common pitfalls in the application process.

Your Trademark or Service Mark is a valuable asset in that it establishes goodwill with your customers.

It is critical that you ensure the Trademark you select is one that you can register and protect. If you

need assistance in selecting and protecting your Trademark, please contact Mr. Manoj Kumar

Srivastwa by e-mail at mytradesafe@gmail.com or call (+91) 969 349 8580. Mr. Manoj Kumar

Srivastwa who is an Attorney focusing exclusively on Intellectual Property Law and has extensive

experience in all aspects of Trademark, Patent, Copyright, Trade Secret, Unfair Competition and

Domain Name Law. Further information can be found at www.tradesafe.in

This article is for informational purposes only and does not establish an Attorney-Client Relationship.