The trademark selection process can be daunting. There are multiple business, marketing, and legal considerations that can often conflict.

Whether an established business is selecting a trademark for a new product launch or a start-up is adopting its first trademark to define its brand identity, it is important to be proactive and adopt best practices. Doing so can help secure protection for the trademark and avoid future risks.

When You May Need to Select a New Trademark

There are many situations in which a business may need to select a new trademark. Two of the most common situations are when a business is adopting a new product or service or decides to undergo a rebrand, as a result of a sale of the business or conflict with a competitor.

In any situation, it is important to consider the inherent strength or weakness of the chosen mark, conduct a clearance search, and secure registration. The potential risks of not doing so can include loss of rights, future conflicts with competitors, and a possible need to rebrand.

Best Practices to Keep in Mind When Selecting a New Trademark

The process of choosing a new trademark may often begin with some brainstorming and a list of possible options. In a business, this list may come across the desks of several stakeholders before it is narrowed down to a couple of options.

At this stage, implementing some best practices to finalize the selection can help streamline the process and minimize risks. As the first step, any inherent risks in a potential mark should be considered. Once the list of options has been narrowed down to one, a clearance search should be conducted. Finally, once a trademark has been cleared and it is determined to have minimal risks, federal trademark registration should be secured.

These best practices can take some time. The federal trademark registration process in the US can take upwards of a year. However, taking the time to minimize risks when adopting a trademark can avoid significant loss of time, money, and brand identity, as a business invests time and money into a new trademark.

Consider Any Inherent Weaknesses in the Chosen Mark

Potential trademarks may have inherent weaknesses based on the nature of the mark and market considerations.

Trademarks can be generally categorized from strongest to weakest across a spectrum of marks defined as fanciful, arbitrary, suggestive, descriptive, and generic.  

• Fanciful marks consist of made-up terms and are entirely original.
• Arbitrary marks are defined words that have nothing to do with the goods or services being provided. An example of such a mark is Apple.
• Suggestive marks are those that provide some hint or insight into the goods or services being offered. These types of marks are favored because they may provide the best of both worlds by creating a link between the goods and services and the mark in the minds of consumers but being distinctive enough to secure trademark protection.
• Descriptive marks are those that describe an ingredient, quality, characteristic, function, feature, purpose, or use of the products or services offered under the mark. While these types of marks can be great at clearly communicating to customers a product or service, they are considered weak marks. Protection for these marks can be limited.
• Generic marks are marks that include only the generic term for a good or service (e.g. “Computers” as a mark for computers). Generic marks are never eligible for trademark protection.

When narrowing down the list of possible trademarks, each of them should be placed in one of the above categories with a consideration of the scope of protection that may be obtained.

Market considerations can also greatly impact the strength or weakness of a mark. Cultural sensitivities to a particular mark should be considered in relation to the particular markets and jurisdictions where the mark will be in use. Each potential mark should be vetted for any offensive or inappropriate meaning in different languages, possible cultural appropriation, or other possible negative perceptions.

Conduct a Clearance Search

Once the list of possible trademarks has been narrowed down to one, the next step is conducting a thorough trademark search. This helps to flag any potential risks upfront, including uses of a similar by a competitor, which could result in confusion in the marketplace or potential legal conflicts. A comprehensive trademark search should include a search of existing applications and registrations in all jurisdictions in which the mark will be used. If the mark will be used in the United States and internationally, the search should include the relevant country’s trademark registrations.

The clearance search should also include a search of unregistered uses in all relevant jurisdictions. These should include social media uses, domain name registrations, business records, and other online uses.

A trademark serves as a source identifier for potential consumers. If there are other similar trademarks used in the marketplace already, this can create potential confusion among consumers and can negatively impact a brand’s identity and reputation. It is important to ensure that your mark does not infringe on any third-party trademarks to avoid the costs and loss of trademark rights that could come from future legal disputes.

Secure Registration and Engage in Ongoing Maintenance and Enforcement

Once a trademark has been preliminarily cleared, it is a best practice to apply for trademark protection of the mark in all jurisdictions in which the mark will be used as soon as possible. It is important that the trademark registration covers the full scope of goods and services that will be offered under the mark.

Successful registration of a trademark is only the beginning. To maintain trademark rights, it is important to file regular maintenance filings to renew registrations, engage in trademark watch services to monitor any potentially infringing uses of the mark by a third party and take steps to enforce trademark rights.

When selecting a new trademark, it is important to build in a trademark protection strategy at the outset. This ensures that there is a return on investment of the work done at the outset to secure trademark protection.

How to Avoid Risks When Selecting a New Trademark

To avoid risks when selecting a new trademark, it is important to be proactive in seeking out and assessing potential risks and taking steps to secure registration.

By taking these steps before adopting the trademark and investing significant time and money in growing brand recognition among consumers, future risks can be avoided. It is less costly and disruptive to pivot to a different mark with reduced risk early in the trademark selection process than needing to do so after the trademark has gained valuable goodwill in the marketplace.

Simplify the Trademark Selection Process With the Help of a Seasoned Trademark Attorney

The trademark selection process often involves the input of many different stakeholders. Navigating all of these considerations, while also understanding legal risks and requirements, to secure a trademark that checks off all the boxes can be daunting.

Consulting with a seasoned New York City Trademark Attorney can help navigate business and marketing needs, which may not always align, to secure a trademark that can add tremendous value to a business.