Trademark Selection and
Because a company's trademarks are among its most visible assets, great care should be taken in selecting a mark. Some marks, such as coined or fanciful marks, are stronger and more protectable than others, such as merely descriptive marks. Once a mark has been selected it should be cleared for availability. Because trademark infringement can lead to both compensatory damages (intended to compensate the wronged party for harm suffered) and punitive damages (intended to punish the wrongdoer), it is critical to conduct a trademark search before launching a new mark.
Selecting a trademark presents unique challenges. The natural tendency is to select a mark that has some connection with the product or service that will be associated with the mark. However, the U.S. Patent and Trademark Office (PTO) will reject a mark that is merely descriptive unless the mark has acquired secondary meaning, generally requiring five consecutive years of use of the mark or such significant advertising and marketing that consumers immediately link the mark with its owner or source. A mark that is wholly coined or made up, such as PEPSI® or XEROX®, is meaning-