Trademark Selection – How to Pick the Best Mark for your Brand

Selecting a mark for your brand can require quite a bit of creativity.  As an overarching strategy, you want to select a mark that you can obtain a federal trademark registration on so that you obtain nationwide rights to use the mark.

Selecting the Trademark

As background, there are three types of marks that will give you the highest probability of obtaining a federal trademark registration: fanciful marks, arbitrary marks, and suggestive marks. 

Fanciful Trademark

A fanciful mark is an entirely made up word.  A fanciful mark has the highest probability of obtaining a federal trademark registration.  The following marks are examples of fanciful marks:

• Google: is a made up word
• Exxon: is a made up word.

We recommend that clients try to select a fanciful mark if possible. 

Arbitrary Trademark

An arbitrary mark is a common word which is used in a meaningless way.  An arbitrary mark is a word with a dictionary meaning which is used with goods and services that are not related to the dictionary meaning.  The following marks are examples of arbitrary marks:

• Camel: is a common word not related to the cigarettes.
• Apple: is a common word not related to computers.
• Amazon: is a common word not related to books and other products.

We recommend that clients try to select an arbitrary mark, if they don’t select a fanciful mark. 

Suggestive Trademark

A suggestive mark tends to indicate a characteristic of goods or services, but requires some imagination to associate them to the goods or services.  The following marks are examples of suggestive marks:

• Netflix:  tends to suggest movies that are purchased online.
• Jaguar: tends to suggest fast cars.

We recommend that clients try to select a suggestive mark if they don’t select either a fanciful mark or an arbitrary mark. 

Descriptive Trademark

A descriptive mark has a dictionary meaning which is used in connection with goods or services directly related to the dictionary meaning. The following marks are examples of descriptive marks:

• Athletic Shoes:  has a meaning relating to shoes
• Home Insurance Agency:  has a meaning relating to a home insurance agency.
• Rock Band:  has a meaning relating to a classic rock band.

Since the USPTO does not like to allow federal registrations of descriptive marks, we recommend that clients try to avoid them if possible or to pair them with fanciful, arbitrary, or suggestive words. 

Having a Trademark Search Performed

After selecting a preliminary mark, it highly beneficial that you have a trademark search performed by a reputable trademark attorney to understand the likelihood of being able to protect the mark with a federal trademark registration.  If the trademark search indicates a low probability of obtaining a federal trademark registration, then you will most likely want to select another mark for your company or product brand.