How to choose an appropriate trademark for a product or a service? - IPScape

Owners of a mark likely prefer a trademark which is descriptive and relates to the product associated with it. However, the trademark office most likely will not allow such marks to go through registration. When an owner of a trademark is in the process of choosing a mark, the attention must be on the opposite, that is to pick a mark that is unique, stylized and that has no association to the product or services provided. An applicant for a trademark registration should always choose a mark that does not in anyway describe the product or service it represents.

A trademark is more than just a brand name. It is primarily the identity of a business. It is an assurance to a customer that the business has created an excellent quality and reliability of the product or service the business offers to its customer. A trademark absolutely indicates that the owner of a mark will keep its products or services relevant to a changing commercial scenario. A trademark increases the revenue growth of a company. The brand creates a durable source of cash flow into a business. Hence, it is important to focus on choosing an ideal trademark before starting a business venture.

Asides descriptive trademarks, an owner must be over cautious about his trademark not to cause infringement with an already existing / registered trademark. It is not sufficient that the selected mark is not identical to an existing trademark, but it must not in anyway confuse the customer as to the source of the product or service. Hence, the mark selected must be new, exclusive, and distinctive from an existing mark used in commerce in the same channel of trade.

To conclude, it is always recommended that an owner of a mark take the help of a trademark lawyer to determine whether his mark will likely go through and successfully be registered in a national trademark office. Below is a checklist that an applicant should consider before filing a mark with a national trademark office. For example, the Indian Patent and Trademark office / the United States Patent and Trademark Office (USPTO).

Checklist:

1. Have you obtained a registrability opinion from an attorney for the mark sought to be registered.
2. Is the mark generic – a common name/word used in everyday life?
3. Is your mark the same, similar, or confusingly similar to a registered mark?
4. Is your mark descriptive of your product or service?
5. Is your mark the same or similar to existing national emblems, symbols, etc. that have national or international significance?
6. Is your mark scandalous, immoral, or deceptive or signify any scandalous, immoral, or deceptive meaning?
7. Is your mark merely ornamental or decorative in nature?
8. Is your mark merely a trade name or surname?

If you answered No to questions 2-8, your mark is probably registerable as trademark with the Indian Trademark Office.