If you're confused by the title of this article, good. You should be. As you might have guessed, applying for a patent is a completely different and separate process from applying for a trademark. However, I run into questions every now and then about the title of the invention.
Most clients come up with catchy names for their invention. (Usually it's a trademark for a good that is included in the patent application.) While clients come up with catchy names with the intent to market or sell their invention using these names, these names are not suitable for use as the title of the invention in a patent application.
According to MPEP Section 606, the title of the invention should be "brief but technically accurate and descriptive and should contain fewer than 500 characters." Often, when I complete a patent application, I tell my clients that the title of the invention is different from the one that they might have thought of, but that they can use whatever name they desire to market or sell their invention regardless of the title of the invention in a patent application. Sometimes clients insist that I change the title to the one that they have initially thought of, with the assumption that the title (which is their trademark) would be warranted a patent protection. Unfortunately, this is not the case, and a patent examiner may require change in title if the title is not descriptive of the invention claimed.
Once clients understand the difference between a patent application and a trademark application, some desire to apply for a trademark for the invention claimed. If this is the case, clients should keep in mind that a good title for an invention in a patent application can be a bad trademark in a trademark application.
Trademarks fall along the following "spectrum of distinctiveness" (listed strongest to weakest): fanciful, arbitrary, suggestive, descriptive, and generic. A fanciful trademark is prima facie registrable, while a generic trademark cannot be protected, because generic trademarks are simply common names of goods and/or services. Descriptive trademarks cannot be protected unless a secondary meaning can be shown.
Thus, a good patent title that accurately describes the invention, would likely either be a generic or a descriptive trademark, which are not warranted trademark protection (unless you have a descriptive trademark with a secondary meaning). This means that the catchy names that the clients have initially thought of can be put to good use (if it is at least suggestive) in their trademark application.