To determine if a Mark is federally registerable, first consider whether the mark is improperly descriptive of the goods and/or services with which it is (or will be) used.

For the purposes of federal registration, a Mark is improperly descriptive if it is:

• primarily merely descriptive of the goods/services
• deceptively misdescriptive of the goods/services;
• primarily geographically descriptive of the goods/services;
• primarily geographically deceptively misdescriptive of the goods/services;
• primarily merely a surname; or
• ornamental.

Of these, the most common concern is whether the mark is merely descriptive.  For example, although wannabe entrepreneur Jo would love to call her pizza shop JO'S PIZZA, such a mark doesn't qualify for federal registration, because it is overly descriptive, and thus not sufficiently distinctive.  On the other hand, JO'S ZA, or better yet, JOZA just might work, since the word “za” might not yet be (and maybe never will be) widely recognized as short-hand for “pizza”.

From a registerability standpoint, marks that only hint are good, marks that leave you clueless about the underlying product or service are even better (think EXXON, XEROX, CENTRUM, COCA-COLA, etc.).  By the way, the USPTO’s trademark examiner does not examine the spelling of a “word” mark (i.e., a “brand name”, alphanumeric mark, and/or textual mark that is not limited to any particular font, style, etc.), but how it sounds (i.e., the audible impression when spoken).  For logo's, the visual impression is examined.  

Also, any double meaning of the words of a textual mark might play in your favor in terms of registerability.  The key will likely be whether the multiple interpretations that make the name a “double entendre” are associations the public will fairly readily make, and whether at least one of those interpretations is not merely descriptive.  Marks for which such a double entendre worked include: SUGAR & SPICE for bakery products; THE HARD LINE for mattresses; THE SOFT PUNCH for a noncarbonated soft drink; and NO BONES ABOUT IT for fresh pre-cooked ham.  But in the service mark realm, EXPRESSERVICE for banking services was ruled not registerable.

As you weigh your choices, remember that the world will know your business (and maybe even you) by the identity you create for it.  The more distinctive that identity, the easier it will be for the world to remember your business, for it to obtain federal rights in that identity, and for it to exercise those rights if necessary to exclude pirates and thieves from attempting to cash in on its strong identity.

If a desired mark is not clearly improperly descriptive, the next step is to try to determine whether that mark (or one that is confusing similar to it) has already been registered.  To facilitate that determination, Michael Haynes PLC can perform a Preliminary Registerability Search, and/or we can order a Professional Clearance Search from a professional mark searching service.

Our Preliminary Registerability Search typically costs from $150 to $300 per class, and can be completed relatively rapidly, often the same day as requested.  The Professional Clearance Search typically costs about $550 to $750 per class, and the turn-around time on that search is typically about 1 week.  Although not definitive, the results of a Registerability Search can help you determine whether the mark is likely to be unique enough to qualify for federal registration.

To be “unique enough”, use of the mark must not create a “likelihood of confusion” with another's mark regarding the origin of the goods/services. If it does, it might be worthwhile to adopt a different mark to obtain registration and/or to avoid infringement.