Be the Mark You Wish to See in the World

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What you need. What we know.™ – Trademarks: Selection Matters​

When an existing or prospective client tells me they have a business/product/mobile app name that they want to trademark, I am happy to hear that they are thinking about their trademark rights and building their trademark portfolios. 

Too often, however, when I hear the name, I repress a groan. It’s descriptive. Yes, it clearly communicates what they do/provide/have built, but it is bland, uninteresting, and safe.  In particular, if the business is a start-up and doesn’t have much goodwill or brand recognition to which to point, there is a certain mindset that descriptive will generate business.

Don’t be *that* Mark.  Be the Mark You Wish to See in the World.

When considering the adoption of a Mark for your business/product/mobile app and the like, 

  • ​Be arbitrary! Where the connection between the Mark and the goods and/or services provided isn’t clear, the trademark and the rights that accrue to it are actually stronger than for a descriptive Mark. If you can’t be arbitrary, at least be clever enough to be suggestive rather than descriptive.
  • Do your research! If a quick Google Search turns up 64,000 results, unless the majority of the results refer to *your* business (not likely), this volume is not necessarily a good thing.
  • Similarity is a risk factor! If your Mark looks and sounds similar to another Mark already in use, in particular in the same industry (e.g., automotive), offering the same services (buying and selling cars), targeting the same customers (people buying cars), and advertising through the same outlets, or even just a combination of the foregoing, your Mark could be vulnerable. Trademark law abhors a likelihood of confusion.

So, of course, never adopt or use a Mark with the intent to cause confusion.

What you need. What we know.™ – Trademarks: Selection Matters​


About the Author:

Barbara Alexander is licensed to practice law in California (2002), Georgia (2010), and Nevada (2001). Her passion for intellectual property dates back to the mid-90s when she returned from living in Dublin, Ireland to work for a Boston-based venture capital firm, investing in life sciences and technology companies. Attending law school in Washington, D.C. at Washington College of Law, American University from 1998-2001, Barbara’s legal training focused on federal law – of which trademark, copyright, and patent are a significant part. Barbara started Alexander Legal LLC in January 2014 to offer clients more personalized service at a better price point than larger firms can offer.
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