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Trademark Protection: Creating a Distinct Mark

Intellectual Property FirmsDeciding on a unique and distinct name for a business may sound like an exciting task, but the importance of the process should not be taken lightly. In order to enjoy the maximum protection for a trademark, many factors must be taken into account when constructing an overarching IP strategy.


Foremost, for a mark to be distinctive, one should avoid generic or ordinary names, since generic terms used in the ordinary context receive little or no legal protection, as they are not distinctive. For example, “Colors” paint shop merely describes the nature of a paint-shop business, and does not distinguish it from competitors; thus, minimal protection, if any, would be granted to such a name. In contrast, a fanciful name such as “Ali Baba” would be a distinctive name for the business. Keep in mind, however, that as an exception, a generic name can be entitled to protection if it becomes widely recognized as a mark over time (such as McDonald’s).


To create a distinctive mark, one may use an ordinary word in an unusual context, such as “Camel” for cigarettes, or combine several ordinary words in an interesting way. One may also make up a completely new word, such as “Kodak.” One should be careful to create a name that is easy to pronounce, and is appealing both in how the name looks and sounds. It is important to note that while such unique names are legally strong, they require substantial marketing efforts (inherently associated with high costs) in order to become recognized. Intellectual property firms specialize in assessing the strengths and weaknesses of these issues for a desired mark.


Another category of effective marks are those that are suggestive, yet do not directly describe the product or service. An example of such marks is the perfume brand “Obsession” which hints at creating the mystique of temptation, a favorable attribute for a fragrance. Such a trademark is usually used for “vanity” businesses which involve influencing the consumer’s self-image (such as cosmetics, jewelry, fashion clothing, and sports apparel).


Using fanciful terms in a context that is interesting and fun without actually describing the goods or services is a clever way to create a mark that is distinct. Other options include using ordinary words in unusual combinations, or using common terms combined with unique graphical designs are among the creative ways to create distinct marks.


In creating a mark which may eventually go global, one should be concerned about how it translates into other languages, what it sounds like to foreigners, and any other unwanted connotations. The following examples, while humorous, are true stories that unfortunately resulted in unanticipated consequences for the mark holders.


  • Gerber, the trademark of a famous baby-food maker, is also the French word for “vomiting.” You can imagine that such a connotation would limit the company’s efforts in French-speaking countries.
  • Ford’s car model Fiera, being the Spanish word for an “ugly old woman,” came across as a distasteful option to Spanish speakers.
  • Nike had to remove more than 38,000 pairs of sneakers from the market when its flaming air logo for its Nike Air sneakers offended Muslims because it looked too similar to the Arabic form of God’s name, “Allah.”
  • The wildly successful Got Milk? slogan of the Dairy Association ran into a problem when they expanded their advertising into Mexico, as the Spanish translation read, “Are you lactating?”


And the list goes on and on. In order to maximize the value of your mark when choosing your brand name, make sure your mark does not fall into such traps in order to build sustainable brand equity as part of a comprehensive IP strategy.


FlashPoint IP, a leader among intellectual property firms, provides all types of professional trademark searches for registered and unregistered marks worldwide, as well as national and international trademark registration. We assist in the candidate selection process of brand names to maximize IP value and protection. Contact us to discuss your options regarding IP strategy and positioning, and to find out more about FPIP trademark filings. On Your Mark, Get Clearance, Go!