How to Select a Good Trademark - Trade marks and Names | Newsletter 2007:

By Elias Borges

Your trademark is the most important asset your business will ever own. A good trademark will distinguish you from the competition and help you stand out in a crowd. A poor trademark will entangle you in legal disputes and blunt your marketing efforts. Selecting a good trademark is as simple as following the following guidelines.

Avoid Trademarks that cannot be Registered

There is no point investing in a trademark that you can’t register. Registering the mark protects it from competitors, ensures your ownership rights in the mark and makes it easier to enforce your rights against copy cats. As you will read below, certain types of words are inherently poor choices for inclusion in a trademark because they cannot be registered.

Avoid Purely Descriptive Words

Words which describe the nature or quality of the goods or services sold with the mark are not permitted to be registered. Hence, the mark “Cold Beer” for use with malt beverages cannot be registered because it describes the actual product being sold. If registered, it would prevent anyone from using the terms Cold and Beer to describe their malt beverage.

Avoid Surnames

Surnames cannot be registered as trademarks. Hence the mark “Wilson Power Boats” is a poor choice for a trademark because the word Wilson is a surname (and the rest of the mark is descriptive).

Avoid Confusing Trademarks

A trademark which is confusingly similar to a registered trademark cannot be registered. Hence, the mark “Sun-Screen” cannot be registered if the trademark “Sun Screen” has already been registered for a similar type of product. A search of the US Trademarks Database ( and/or the Canadian Trademarks Database ( is a good idea.

Avoid Generic Words in a Trademark

The goal is to select a trademark which is as unique and distinctive as possible; therefore, avoid generic words. Examples of generic terms include “green, superior, Canadian, American, deluxe, gold, premium, economy,” and a plethora of others. These words are generic and if you incorporate them into your trademark, you ensure that you blend into the crowd, not stand out in front of it. Geographic words fall into this category.

Avoid TLA’s (Three Letter Acronyms) and Numbers

IBM, ATT, and CNN are distinctive trademarks because their respective owners poured tens of millions of dollars into making the marks famous. Even a poor trademark can be made famous if you through enough money at it. But acronyms are intrinsically difficult to remember, while words, especially colorful words, are easily remembered. Hence “ELS Software Solutions” is not as memorable as “Volcanic Silicon.” Likewise, avoid using numbers in a trademark as they tend to be less memorable. Furthermore, there are a limited number of unused acronyms available, so there is an excellent chance that your TLA will be confused with someone else’s.

Use Invented Words

Invented words are words which do not exist in any language, apart from your trademark. Examples include Spandex, Exxon, Kodak, Viagra, and several other famous trademarks. Invented words are a good choice for use as trademarks because they are not descriptive and they tend to be quite distinctive. You can create an invented word by simply combining parts of other words. For example, Microsoft is a combination of “Micro computer” and “software.”

Try animal or plant names

Animal and plant names tend to be quite memorable and, if used appropriately, can convey a good image while still being distinctive. Apple Computers is a good example, but other examples include Tiger Direct, Ford Mustang, and countless others.

First Word

Make sure that the first word in your trademark is as distinctive as possible. It is often necessary to add descriptive words to the trademark in order to convey what is being sold or marketed in association with the mark. If generic words must be included then it is doubly important to ensure that the first word of the mark is as distinctive and unique as possible.

Patents v. Trademarks - Which One Should You Get

by Elias Borges

A client asked me the other day, “what’s a better form of protection, patents or trademarks?” Without giving a lot of thought to the question, I answered “Trademarks are my favorite form of intellectual property”. Of course, it’s not a question of which type of protection is “better”, it’s really a question of which type of protection is available.

Trademarks are a powerful and valuable form of legal protection. A trademark can be any word, name, short phrase, combination of characters, logo, design or even sound which is used to identify your products and/or services. A trademark registration protects the trademark against anyone who might attempt to use a mark which is “confusingly similar” to the registered trademark. The registration process is relatively quick and inexpensive, and the registration lasts as long as the trademark is used. Indeed, the COCA COLA trademark registration is over a hundred years old. Best of all, a trademark registration can be incredibly valuable once the trademark becomes famous. For example, by some estimates, the LEXUS trademark adds as much as $7,000.00 to the value of a vehicle (i.e. the amount extra that you have to pay because the car, which is really a Toyota, bears the LEXUS trademark). Trademarks are so valuable, that countless books have been written on the subject of how to increase the value of your trademark (i.e. “Branding”). From my perspective, I like trademarks because they are relatively easy to register for clients, provided a few simple rules are followed when selecting a trademark. These rules are:

• Don’t use a mark which is confusing with another trademark;
• Avoid using generic words in the trademark;
• Avoid using words in a trademark that simply describe the products or services which are associated with the trademark;
• Don’t use a surname as a trademark, and most importantly,
• Pick a trademark which is as unique and distinctive as possible.

As long as the client follows these rules, it is quite likely that the trademark can be registered. That’s why I like trademarks so much. Trademarks are easy (sort of).

Despite their obvious benefits, trademarks have one “disadvantage” (from the trademark owner’s point of view). Trademarks do not protect products or services, they only protect the “good will” of the company (or person) who sells the products or services. Hence, the trademark registration for “COCA COLA” does not prevent anyone from manufacturing or selling a carbonated beverage that tastes exactly the same as Coca Cola’s product. Hence, while powerful, trademark registrations may not be enough to protect a client’s interests.

Patents, on the other hand, do protect products. More to the point, patents protect inventions. That invention could be a new machine, a new material, a new chemical, a new product or a new method of doing something. The patent gives the patent holder the right to legally restrain anyone from making, using or selling any product or service that is covered by the patent. Hence, a new product can be protected by a patent, and the owner of the patent has a monopoly on the manufacture, sale and use of the product. As you can imagine, patents can be very valuable. Indeed, if you’re a relatively small player, patenting your new product or service may be the only way to secure your market share. Furthermore, since patents create monopolies, it is often possible to demand outrageously high prices for patented products. For example, drugs covered by patents often cost several times as much as their none-patented counterparts. Indeed, I recently filled a prescription for a patented medication that cost me over $200 while an “over the counter” equivalent (which was nearly as effective by the way) cost a mere $12. The extra $188 went directly into the drug manufacturers pocket (nice work if you can get it).

However, patents have several major “problems” (from the patent owners point of view). Firstly, they are not always easy to get. To be eligible for patent protection, the invention must be useful, novel and inventive (i.e. they must not be obvious). Publishing an invention prematurely can prevent the invention from being novel. As for inventiveness (i.e. non-obviousness), that is a much harder test to pass. Suffice it to say that oftentimes inventions fall short when it comes to inventiveness. From my experience, “cutting edge” products which represent the “state of the art” in an industry generally pass the inventiveness test.

Secondly, even if the invention is capable of being patented, it can take a long time to actually be granted a patent. Indeed, it may take years. However, there are a few recent developments with US patent practice which might speed the process up considerably (more on that in a later article).

Also, when a product becomes fabulously successful, competitors may try to “get around” the patent by trying to introduce a product which is similar but not the same. If the patent is sufficiently broad, the only way a competitor can avoid legal action is to produce a product which is very different. Nevertheless, there is a possibility that competitors may attempt to “design around” the patent. This can be avoided if there are several patents covering the same product.

However, from most patent owner’s point of view, the biggest “weakness” of patents is that they have a limited life-span. Indeed, patents are enforceable for only 20 years (more or less). There is no way to extend the life of a patent; however, it may be possible to patent improvements to the product, and thereby effectively extended the patented “life” of the product.

The best approach is to marry patent protection with trademark protection. Use your patents to buy yourself a monopoly for a decade or two, and during that time, build the value of your registered trademarks so that when your patents do expire, your trademarks will have a great deal of value. This is the approach taken by many successful companies. In my experience, marrying patent protection with trademark protection is the best way to build value in your business.


Protecting a Design - Copyright, Industrial Design or Trademark

By Elias Borges

The three dimensional shape or design of an item is often a key ingredient in its commercial success. Products, particularly consumer products, which are visually appealing tend to do better in the marketplace then products who’s design is purely utilitarian. For example, desk top computers manufactured by Apple computers often have a stylish design which is dictated by aesthetics rather than function. Indeed, the commercial success of many products is often due more to its aesthetic design than its functional design. It is not surprising therefore, that most corporations take pains to protect the aesthetic appeal of their products.

There are three legal vehicles for protecting the three dimensional shape or design of a product: Copyright, Trade-mark and Industrial Designs. Industrial Designs are often the most straight forward. Industrial design protection affords the owner of a novel design a monopoly on the design for a period of 10 years. Furthermore, registering that protection is relatively straight forward. An industrial application is filed along with the filing fee, and a registration is usually granted within several months. The industrial design application is often little more than a series of drawings (or photographs) of the item taken from a variety of angles. Decorative or visually appealing designs can be protected. Designs which are dictated solely by their function cannot be protected in this way.

Protecting a design as a trademark may be likewise simple. If the design is primarily used to identify the source of the goods (i.e. product), the design may be protected by simply filing a trademark application. The design of the Coca Cola bottle is a famous example of a three dimensional trademark design (referred to as a distinguishing guise). Unlike an industrial design, a registered trademark does not have a limited life, although it is subject to renewal every 15 years. Functional aspects of the design are not protectable as trademarks.

It is possible for a three dimensional design to be afforded common law trademark protection, providing the design is famous and providing the design acts to identify the source of the product. Designs which are functional or purely decorative or designs which are generic in nature cannot be protected. Of course, proving that a particular design is worthy of common law trademark protection is often a difficult task. Therefore, registering the design as a trademark is advisable.

In some circumstances, a three dimensional design may be afforded copyright protection. If the work is artistic (a sculpture for example), then it is subject to copyright protection. However, if the item is mass produced by an industrial process, then copyright protection may not be available and industrial design protection should be sought. Also, in order to infringe the copyright of a design, the allegedly infringing item must be an actual copy of the protected design. It may not be an infringement of copyright to produce a competing product whose design was “inspired by” rather than “copied from” a particular design.

In the final analysis, the nature of the design will dictate the best mode of protection. Distinctive packaging designs are best protected by registered trademarks. Decorative designs applied to consumer products (furniture, appliances, etc.) are usually protected as industrial designs, and works of an artistic nature are best protected with copyright. In many cases, overlapping protection is available.


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