Selecting a trademark is not merely a branding exercise, it is a legal risk assessment process. Each year, the United States Patent and Trademark Office (USPTO) receives a substantial volume of applications, many of which are refused during examination or later challenged through opposition or cancellation proceedings.
This guide outlines the key principles for choosing a strong trademark, supported by relevant case law and doctrinal standards.
Disclaimer: This article is for general informational purposes only and does not constitute legal advice.
1. Avoid Well-Known Trademarks
At the outset, applicants should eliminate any marks that resemble nationally or internationally well-known trademarks.
Even if a famous mark is not registered in the specific class of goods or services at issue, it may still block registration due to its broad scope of protection. Well-known marks are often protected against use in unrelated fields where such use would create an association or dilute the brand.
👉 Practical implication: Avoid adopting marks that are identical or confusingly similar to widely recognized brands, regardless of class distinctions.
2. Identify the Relevant Trademark Classes and Commercially Related Fields
Trademark protection is structured around international classes, but the USPTO's analysis is not confined to identical classifications. Instead, it also considers whether goods or services are commercially related.
For example:
- Clothing → Class 25
- Online retail services → Class 35
- Cosmetics (often considered commercially related to apparel) → Class 03
Failure to search across related classes may result in overlooked conflicts.
👉 Key point: A comprehensive clearance search must include both primary and related classes.
3. Evaluate Likelihood of Confusion Beyond Identical Marks
The USPTO applies the "likelihood of confusion" standard under §2(d) of the Lanham Act. This analysis extends beyond identical marks and considers:
- Phonetic similarity
- Visual similarity
- Conceptual similarity
- Overall commercial impression
This framework is grounded in well-established case law:
- In re Viterra Inc., 671 F.3d 1358 (Fed. Cir. 2012) The court held that "XCEED" and "X-SEED" were confusingly similar despite spelling differences, emphasizing phonetic identity and shared meaning.
- AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) The marks "Sleekcraft" and "Slickcraft" were found confusingly similar based on sound and appearance.
- In re Shell Oil Co., 992 F.2d 1204 (Fed. Cir. 1993) "RIGHT-A-WAY" and "RIGHT OF WAY" were deemed similar due to identical meaning and overall impression.
- In re Majestic Distilling Co., 315 F.3d 1311 (Fed. Cir. 2003) The addition of terms such as "Majestic" did not eliminate confusion where the dominant portion of the mark remained identical.
👉 Legal takeaway: The inquiry focuses on consumer perception, not side-by-side comparison or exact duplication.
4. Avoid Descriptive or Generic Terms
A fundamental principle of trademark law is that descriptive terms are not inherently distinctive.
A mark is considered descriptive if it immediately conveys information about a product's:
- Quality
- Characteristic
- Function
- Purpose
The USPTO refuses such marks to ensure that competitors can freely use descriptive language.
This principle is consistently reinforced in case law:
- In re Boston Beer Co., 198 F.3d 1370 (Fed. Cir. 1999) "The Best Beer in America" was refused as merely descriptive of beer products.
- In re Gyulay, 820 F.2d 1216 (Fed. Cir. 1987) "APPLE PIE" for potpourri was refused because it directly described the scent.
These decisions illustrate that marks which immediately convey product attributes fail to function as source identifiers.
👉 Key takeaway: Distinctiveness, not descriptiveness, is the foundation of a strong trademark.
5. Conduct State-Level and Common Law Searches
Trademark rights in the United States arise from use in commerce, not solely from federal registration.
Accordingly, businesses operating at the state level or under common law may possess enforceable rights even without a USPTO registration.
👉 Practical implication: Clearance searches must extend beyond federal databases to include:
- State trademark registries
- Business directories
- Online marketplaces
- General commercial use
6. Exercise Caution with Geographic Terms
Geographic terms present two distinct legal issues:
A. Primarily Geographically Descriptive Marks (§2(e)(2))
These marks describe the origin of the goods and are generally considered weak.
They are not registrable on the Principal Register absent acquired distinctiveness and may initially be limited to the Supplemental Register.
B. Primarily Geographically Deceptively Misdescriptive Marks (§2(e)(3))
These marks falsely suggest a geographic origin and are subject to outright refusal.
The Federal Circuit's decision in:
- In re Save Venice New York, Inc., 259 F.3d 1346 (Fed. Cir. 2001)
is instructive. The applicant sought to register "THE VENICE COLLECTION" for goods such as glassware, textiles, and decorative items that did not originate in Venice, Italy.
The court affirmed refusal, finding:
- Venice is widely associated with such goods
- Consumers would likely believe the goods originated there
👉 Legal takeaway:
- Accurate geographic terms → weak
- Inaccurate geographic terms → deceptive and unregistrable
7. Avoid Marks that are Primarily Merely Surnames
Marks that are primarily merely surnames are not inherently distinctive under §2(e)(4).
Such marks:
- Cannot be registered on the Principal Register without secondary meaning
- May be eligible for the Supplemental Register
- Require evidence of acquired distinctiveness to gain full protection
This principle is illustrated in:
- In re Etablissements Darty et Fils, 759 F.2d 15 (Fed. Cir. 1985)
where the Federal Circuit affirmed refusal of "DARTY" on the basis that it was primarily a surname and lacked distinctiveness.
👉 Key takeaway: Surnames are treated as weak indicators of source unless they acquire strong brand recognition.
8. Investigate Unregistered but Active Prior Users
A critical but often overlooked risk arises from prior users operating without federal registration.
Under U.S. law, priority is generally based on first use in commerce. As a result, an earlier user may:
- File a notice of opposition after publication
- Initiate a cancellation proceeding against a registered mark
Even without registration, such users may assert enforceable rights if they can demonstrate prior use and likelihood of confusion.
👉 Practical takeaway:
- Absence from the USPTO database does not guarantee availability
- Comprehensive due diligence must include real-world use
Conclusion
Selecting a strong trademark requires more than creativity, it demands a structured legal analysis.
A well-chosen trademark:
- Is distinctive
- Avoids legal conflicts
- Provides long-term protection
Conversely, a poorly selected mark may lead to:
- Refusals during examination
- Opposition or cancellation proceedings
- Costly rebranding efforts
Final observation: Investing time in proper trademark clearance and selection at the outset is a critical step in safeguarding the long-term value of your brand.
