Pick a Trademark You Can Protect

Entrepreneurs love thinking about their brand. It's understandable. Branding helps build presence in the marketplace and solid identification with your products or services. The intellectual property can become a valuable asset over the coming years.

But not if you choose a trademark you can't protect. Although the U.S. Patent and Trademark Office website is reasonably user-friendly, the application isn't. To choose a trademark you can protect, remember these tips:

1. Make it stand out. The whole purpose of a trademark (or "service mark," if you're using it in connection with services and not goods) is to identify and distinguish your offerings from someone else's. There are thousands of graphic designers and clothing manufacturers out there--what sets you apart? This is part of what a trademark (or "mark," for short) tries to do.

2. Think beyond your company name. In many cases, your company will own the trademark. But the company name doesn't have to be synonymous with the trademark. Give thought to tag lines, logos or names of product lines. Take the example of a cookie company. If I named it Nina's Oatmeal Edibles Inc., I could find myself in a branding disconnect if I wanted to branch out to produce chocolate bars. But if I called it Nina's Edibles Inc., I could create different product lines within the company, such as Outstanding Oatmeal Goodness (for the oatmeal cookies) and Cherie Chocolate (for the confections).

3. Stay away from "descriptive" marks. Descriptive marks describe a quality or characteristic of the goods or services, which gives the Trademark Office little to distinguish your products from a competitor's. That's comparable to starting a juice bar business and calling it Juicy. Generally, the Trademark Office will not provide protection for these types of marks. The Trademark Office looks for marks that are "arbitrary"--that is, they generally have no relationship to your products or services. Think of Apple in connection with computers. Suggestive marks can pass muster, too. These "suggest" the qualities of the product or service. Think of Greyhound for a bus service: The animal has qualities that imply litheness and speed, which is the image the company wants to project.

4. Plan to use the mark beyond your neighborhood. You can only get federal trademark protection for marks used both inside and outside of your home state. If you run a local restaurant that does no out-of-state advertising or whose customers all come from within a five-mile radius (that does not cross state lines), you will not be entitled to federal trademark protection. Before the Trademark Office gives you the final right to use the registered mark designation--®--you need to prove how you use the mark to meet this requirement.

5. Search first. The Trademark Office will not protect a mark that is "confusingly similar" to another registered (or applied-for) mark. Let's say you offer website design services under the "Website Wizard" mark. If "World Wide Web Wizard" already does software programming, the Trademark Office may refuse to register yours. That's because it's conceivable that World Wide Web Wizard could offer your services if they fall within the same or related category. In short, the Trademark Office not only looks at the words in your mark, but also at the services you offer. If you don't conduct a full search, you could find yourself with your complete and paid-for application, business cards, website design, brochures and packaging only to have your application denied. (Poking around the Trademark Office website or on Google doesn't count as a "full search.")

Trademarks can turn into a big money pit if you don't handle them properly. With an "I'll save the money by doing it myself" attitude, you could end up building your brand on shifting sand. If you want your trademark to become a valuable (and transferable) asset of your business, work with an intellectual property attorney to ensure that you're making your mark in a protectable way.