The Importance of Selecting a Distinctive and an Inventive Trademark

In many cases, the selection of a trademark can be the difference between success and failure of a product. It is important to work with an experienced legal team when choosing a trademark.

At the Law Offices of Nikki Siesel PLLC, we have more than 50 years of combined legal experience. We have represented clients in White Plains, Westchester County, New York, Connecticut, New Jersey and across the globe. We focus on helping corporate clients of all sizes, as well as entrepreneurs, in selecting trademarks to position their brands for success.

Selecting unique Marks that are fanciful, arbitrary or suggestive will ensure you acquire strong trademarks that will allow you to build mega brands.

• Fanciful Marks are Marks with no recognized meaning in the dictionary. These are the strongest Marks because a consumer will not have any other association with the Mark other than as a source identifier. Examples of fanciful Marks include, STARBUCKS, SPOTIFY, EXXON and ROLEX. An arbitrary Mark has the added benefit of helping entrepreneurs protect their trademarks and avoiding trademark litigation. Also, since a trademark owner has an obligation to police the marketplace for infringement of the trademark, policing fanciful Marks is a lot simpler than monitoring the marketplace for the other types of trademarks. Moreover, it is less likely that you will discover unauthorized use of this type of Mark because you made it up and used your imagination to create the trademark term.
• Arbitrary Marks are familiar words used in connection with unrelated products or services. The most famous example of an arbitrary Mark is APPLE for computers (as the term "apple" has no meaning in relation to computer products other than to function as a trademark). Arbitrary Marks can create appealing associations for consumers. This type of Mark is also an incredibly strong mark that will be given a broad scope of protection.
• Suggestive Marks include terms that suggest a particular characteristic, aspect, feature, function, ingredient, or other attribute of a product or service without actually describing the good or service outright. In other words, the consumer must use his or her imagination to draw a conclusion about the nature of the goods or services. An example of a suggestive Mark is Q-TIPS for cotton-tipped swabs or PHYSICIANS FORMULA for skin cream. . This type of trademark is usually appealing to entrepreneurs because you do not have to spend as much in advertising and promotion to build the association in the consumer’s mind between the mark and the source. The trademark already suggests a specific characteristic that leads the consumer in the direction of determining the nature of the product or service.

The top global brands are trending toward creating more unique and inventive Marks. These corporate giants have learned through experience that avoiding generic and descriptive terms strengthens their brands.

Of course, it is possible to acquire a powerful brand with descriptive terms over time. However, to accomplish this end, significant resources will need to be spent on marketing, advertising and promotion over the years so that a secondary meaning can develop in the consumer's mind. The ordinary meaning normally associated with the word must be replaced with the association of the source of the goods or services.

As your trademark attorneys, we will counsel you on the most efficient methods of building brand strength and the most cost effective ways to distinguish your brand from those of your competitors.

Speak with an experienced New York trademark lawyer about selecting a distinctive trademark. Call 914-949-9550 or contact us online to schedule a courtesy initial consultation with an attorney from the Law Offices of Nikki Siesel PLLC.