Those in the initial stages of developing branding for their businesses or rolling out new product or service names or slogans find themselves in the position of attempting to select a trademark that is both legally protectable and marketable. Many of my clients with business experience are able to determine what makes a trademark strong from a marketing perspective. However, many business people forget to take into account that what is strong from a branding perspective may not be the best choice of trademark for legally protecting your brand.
It is helpful to discuss the different categories of trademarks. These categories fall on a spectrum, with fanciful and arbitrary marks being the strongest, suggestive trademarks falling somewhere in the middle, descriptive trademarks being weaker but sometimes protectable, and generic trademarks being unprotectable under trademark law.
Fanciful Marks
A fanciful trademark is a word or symbol that is entirely invented and does not refer to something else. One example is KODAK for photographic equipment and supplies, as the word “KODAK” did not exist prior to the use of the term as a trade identifier. Other examples include REEBOK, EXXON, and UNIX.
Arbitrary Marks
An arbitrary trademark is a word or symbol that actually exists (i.e., is not invented), but is used to describe something other than what the word or symbol would normally reference in the real world. A famous example of an arbitrary mark is APPLE for computers (and the accompanying Apple trademark logo).
Suggestive Marks
A suggestive trademark is one that suggests the goods or services offered without precisely describing them. For example, IPAD and FRIGIDAIRE suggest the goods and services offered (an iPad being an internet-capable tablet that looks like a writing pad and Frigidaire suggesting refrigerators or some mechanism to keep food cold or “frigid”).
Descriptive Marks
A descriptive trademark is one that uses descriptive words merely to describe the goods or services offered. Descriptive marks are not inherently distinctive because they use every day words to describe products and services. They do not qualify for trademark protection unless and until you have built up the trademark in the mind of the consumer as referencing your specific goods or services and not those of another party simply using the descriptor to describe its products.
Generic Marks
A “generic mark” is really a misnomer, as generic terms cannot be protectable as trademarks. One thing to keep in mind is that a previously non-generic word can suffer what is referred to in trademark law as “genericide”—that is, death by becoming a generic term for the goods or services provided. Examples of terms that became generic words for products include ASPIRIN, ESCALATOR, KLEENEX, and XEROX.
So now that you understand the different types of trademarks, what does that mean for you developing your own new marks? The strongest trademarks fall within the first three categories (fanciful, arbitrary, or suggestive), and, generally speaking, the last two categories (descriptive and generic) should be avoided altogether.
Many clients that I have worked with become frustrated when they try to name their company or product and that name straddles the line between suggestive and descriptive marks. A good, marketable, brand name often aims to suggest the types of goods or services offered so that consumers are immediately aware of what the company sells. It makes obvious sense to a business or marketing person that they would wish to market their goods or services under a name that feels intuitive and familiar to consumers.
A trademark attorney can help you understand where on the spectrum your own chosen name or names might fall, and how a trademark registration with the U.S. Patent & Trademark Office may be strategically designed in order to help avoid or mitigate the risks of having the trademark application rejected based on being too descriptive. An attorney can assist you navigate these nuances and develop a name that is both appealing to consumers and protectable under trademark law.
[Image credit: “Red Apple” by Abhijit Tembhekar from Mumbai, India – Nikon D80 Apple. Licensed under CC BY 2.0 via Wikimedia Commons]
Lizbeth Hasse
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