What you can’t use as a trademark:
- Offensive or disparaging words.
- Names that are primarily a surname
- Names that sound like, look like or mean the same as another competing trademark.
- Words that merely describe a feature of the product.

In my experience, the last two are the source of the most frequent problems. A different spelling or adding one more word to a trademark that already exists is still too close. The USPTO wants to help you register your trademark, but they also want to make sure there isn’t confusion in the marketplace. Foreign translations of trademarks are also a problem “Pomme Ordinatuer” doesn’t look like or sound like “Apple Computer” but it means the same thing. Descriptive words are helpful for telling consumers what your product does, but can’t be registered trademarks.

So what works? I am not an ad wizard but I have noticed a few things that are both clever and capable of being registered.

- Words that are associated with good qualities, but don’t literally describe the product. (e.g. EVEREADY)
- Words or images that are symbols for values that are important to your company. (e.g. FIDELITY, APPLE)
- Puns. Especially if you have a fun product (e.g. GARDEN OF EATIN)
- Just make up a word that sounds good but doesn’t mean anything. (e.g. KODAK)

A large part of a brand’s success has to do with how consumers feel about the products and not so much to do with having chosen the perfect name. I have no idea what “kodak” means (apparently nothing), but I do recognize the name and associate it with quality photography equipment. In the long run, so long as you keep you customers happy, and they know how to identify you, any name might work.

The offending trademark was DOPi which is iPod spelled backwards, but otherwise doesn’t really sound like or look like Apple’s IPOD trademark. Interesting to note that Apple wasn’t the first or only user of the names “iPhone” or “iPad” either. As I type this on my MacBook, I wonder what was wrong with the iBook name?

HT to Martin Schwimmer at the Trademark Blog