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By Attorney Lloyd J. Jassin


This checklist provides an overview of what to consider when selecting a trademark or choosing a name for your business. It should be read in conjunction with its companion article, “Trademark Basics,” which can found at Beware! Selecting a valid trademark is as much an art as a science. When in doubt, seek the advice of a professional.

Points to consider when selecting a trademark:

1. To be protectible a trademark must be distinctive.
2. The key to trademark infringement is the existence of likelihood of confusion caused by using a similar mark.
3. Courts look at the following factors to determine likelihood of confusion:
  a. strength of the trademark being infringed
  b. similarity of the two marks
  c. if no direct competition exists, likelihood prior owner will expand into second user's market
  d. actual confusion
  e. quality of second user's product (i.e., like-quality products are more likely to cause confusion)
  f. degree of care likely to be used by purchasers
  g. intent of the second user
4. When selecting a trademark, do a preliminary search using industry directories to knock- out potential conflicts.
5. After you have narrowed your list of possible trademark candidates, order a full search from a reputable trademark search firm. If the report reveals similar marks used in connection with similar goods or services, you cannot use the proposed trademark, unless you obtain permission.
6. Unlike one-shot titles, series titles, whether a series of books, tv programs, software, or a regularly published magazine or other periodical, is eligible for trademark protection.
7. Protectible titles in one media will be protected in different media if there is likelihood of confusion.
8. A "famous" trademark can be infringed by a use that tarnishes or blurs its commercial magnetism. No likelihood of confusion is required in these instances.
9. Proper usage of a trademark is very important to trademark owners. Always use trademarks as adjectives, not verbs or nouns. Remember. Trademarks are brands, not things.
10. Characters, especially well-known illustrated characters, can function as valid trademarks, even after copyright protection expires.
11. The total image of a product, including the dust jacket of books and covers of magazines, are protected against confusing similarity under trademark law.

NOTICE: This article represents copyrighted material and may only be reproduced in whole for personal or classroom use. It may not be edited, altered, or otherwise modified, except with the express permission of the author. This article discusses general legal issues of interest and is not designed to give any specific legal advice pertaining to any specific circumstances. It is important that professional legal advice be obtained before acting upon any of the information contained in this article.

LLOYD J. JASSIN is a New York-based publishing and entertainment attorney in private practice. He is co-author of the bestselling Copyright Permission and Libel Handbook: A Step- by-Step Guide for Writers, Editors and Publishers (John Wiley & Sons, Inc.), available at bookstores or at Mr. Jassin has written extensively on negotiating contracts in the publishing and entertainment industries, and lectures frequently on contract and copyright issues affecting creators. He is counsel to the Publishers Marketing Association and Vice Chair of the Small Press Center. He may reached at or at (212) 354-4442. His offices are located at 1560 Broadway, Suite 400, New York, NY 10036.

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Disclaimer: The information contained in this website is not intended as legal advice. Because the law is not static, and one situation may differ from the next, we cannot assume responsibility for any actions taken based on information contained herein. Also, be aware that the law may vary from state. Therefore, this website cannot replace the advice of an experienced attorney. Receipt of this information does not create an attorney-client relationship.

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Co-author of The Copyright Permission & Libel Handbook (John Wiley & Sons)

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