May 1, 2012

How to Choose a Trademark

By Antonio Campero

An important decision for companies is choosing the distinctive trademarks that will identify their products or
services in the future, given that, to a great extent, this decision will be fundamental for the future success of the
business. Once factors such as price and quality are linked to a product or service in the consumer’s mind,
trademark identification becomes critical. As a result, it is vital to make a proper trademark selection prior to the introduction of the product or service into the market, pursuant to which certain factors must be taken into
consideration, such as the ease of imitation due to the word(s) or designs chosen, the ease of maintaining the
name(s) or images, etc. Given the foregoing, one should consider the following:
 Carry out a prior investigation to detect possible existing intellectual property rights that may conflict with
the exclusive rights being sought. It is worthwhile to conduct this investigation in various countries to avoid
future conflicts in potential markets that may be considered in the growth plan of the company.
 Verify that the chosen trademark complies with all requirements for registration, meaning that it is not a
generic term, not merely descriptive (although it can be suggestive), and verify the meaning of the name in
various languages, because in some cases, the chosen name is descriptive when translated to another
language and, therefore, not subject to registration.
 Analyze the official classification of marks to determine whether the mark should be registered only for a
group of products or services or for several classes of products or services.
A carefully thought out decision on the choice of a future trademark can be the difference between a product’s
success or failure, as well as a form of avoiding future conflicts that can be expensive.


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Issue 101–May 2012