Although there are many non-legal issues involved in adopting a trademark, the three primary legal questions should be:

The adoption of a trademark for the international market is not a simple matter; the decision is complex and should involve the services of experienced trademark counsel early on. Before a mark is chosen, several factors concerning the inherent distinctiveness of the name should be carefully considered. There are generally four categories of distinctiveness when considering the adoption of a trademark or service mark, namely:

A fanciful trademark is one that is created for the sole purpose of functioning as a trademark, such as XEROX for reprographic supplies and KODAK for photographic supplies. Fanciful trademarks are the strongest trademarks because they are invented and few competitors may claim that they accidentally adopted the same trademark.

Slightly less strong than fanciful marks are arbitrary marks, words that have some meaning to the public but, when used in connection with the relevant products, do not immediately suggest or describe any quality of the products. Famous examples of arbitrary marks include V-8 for vegetable juice, STUDIO 54 for nightclub services and BABY RUTH for candy bars. These are names or elements with significance in certain contexts but no immediate significance with respect to the relevant goods or services. An arbitrary mark may be a strong trademark unless a number of other trademark owners have adopted the same or similar mark in other fields.

A weaker type of mark, but still generally protectable, is known as the suggestive trademark. These trademarks might hint at some quality or character of the product at issue without actually describing the product, such as ROACH MOTEL for insect traps, CHICKEN OF THE SEA for tuna fish, COPPERTONE for sun tan oil and GREYHOUND for transportation services. Suggestive marks border on the dangerous trademark territory called descriptive marks, which are generally not protectable.

Descriptive trademarks are those which describe some aspect, characteristic or quality of the products on which they are used. If a trademark is considered descriptive, it is generally unregistrable in most trademark offices and unprotectable in most courts. Some well-known examples of trademarks that were considered descriptive and non-enforceable in the United States include RAISIN-BRAN for bran cereal with raisins and YELLOW PAGES for organized telephone number listings. Naturally, adoption of these types of trademarks should be avoided since they will not be enforceable against third parties.

Mere misspellings of descriptive trademarks will not suffice to render them non-descriptive or distinctive. In addition, under the doctrine of foreign equivalents, translations of a descriptive word into another language will not rescue the word from being considered descriptive in the United States, and may not assist in certain foreign countries either. Descriptive marks may become entitled to trademark protection if the trademark owner is able to demonstrate that the mark has, through use in the marketplace, become recognized by consumers as indicating a single source of the relevant goods and has, therefore, acquired distinctiveness and secondary meaning through such use.

The final category of marks, namely generic terms, cannot constitute trademarks. The name of a product or service itself can never function as a trademark.

There are other signs besides words that may function as marks and that may be registrable and protectable in the United States, but which may give rise to difficulties in registration and enforcement abroad. Trademarks in this category include those that consist of one or two letters, the combination of which is not pronounceable, non-distinctive numeral combinations, colors, sounds and product configurations.

In addition to word marks, another type of trademark, namely device or logo marks, should also be considered. Some of the more well-known device marks in recent memory include the Nike “Swoosh” Device, the Mouse Ears Device of Walt Disney and the Flying Window Device of Microsoft. Devices may be adopted as trademarks or service marks, either alone or in combination with word trademarks, as composite marks, to add distinctiveness to the marks. Device marks are particularly important for products, which will be sold to markets where consumers have low literacy rates. Naturally, the rules concerning suggestiveness, arbitrariness and descriptiveness apply so that a dog device in connection with kennel services may be considered descriptive, a picture of a globe may be considered suggestive of a product with global appeal, a picture of an apple would be considered arbitrary in respect to computer equipment, and the “Swoosh” Device mark would be considered fanciful.

Another problematic type of trademark in the international arena is a mark containing or consisting of a geographical term. Although the United States has certain standards relating to the protection of geographical marks, such that marks may not be protected if they are geographically descriptive or deceptively misdescriptive, these standards are often much more stringent in foreign countries, so that a mark consisting of the name of a city, region, state or country will not be registrable or protectable in many countries.

A common ploy used by trademark pirates abroad is to register the local translation or transliteration of a trademark, since local consumers who are not accustomed to the English language or Latin alphabet will often look for and ask for products by the local name or local alphabetic or ideogrammatic equivalent. Hence, a trademark that will be used in certain foreign countries may also require the adoption of a local form of the mark, such as the meaning of the mark translated into the local language or the sound that the mark makes transliterated in the local alphabetic or ideogrammatic characters. Local equivalents are often adopted for the markets in Asian countries, former Soviet Union countries, and certain Middle Eastern countries.

Although the United States Patent and Trademark Office’s (USPTO) policy under the Lanham Act is to reject some marks as being offensive, very often marks that are considered registrable by the USPTO may be considered too offensive to register by foreign trademark offices. For example, a mark depicting any form of female nudity would generally be considered unregistrable in most Arab nations. In addition, in the absence of registration, foreign courts may also be disinclined to offer protection even under unfair competition or passing-off principles.

Another consideration in adopting marks involves the adoption of foreign words or the adoption of English words that may be used in foreign countries whose native tongue is not English. Under the doctrine of foreign equivalents in the United States, a trademark consisting of a non-English word will not be considered protectable where the word in its foreign language is considered to be descriptive of the specified goods and services. Even more difficulties may be encountered when parties adopt trademarks that are innocuous in one language but, when exported for use in other countries, take on new significance. Noted examples of such unsuccessful marks in the automotive industry have included the Renault FUEGO in Mexico, where the latter word connotes homosexuality; the Daewoo ESPERO in Spain, where the latter word means “I wait”; and the Vauxhall NOVA in Spain, where the latter word means “no go.”