How should you pick a trademark? You’re at the beginning of the trademark selection process. You want a trademark that grabs your customers’ attention while being legally enforceable. Your graphic designer is busily cranking out possible brand names for you, but you’re not sure which of these options will survive legal scrutiny. So, how should you do it?
Some trademarks, by their very nature, are legally stronger than others. Here’s a guide to help you determine where your trademark finalists fall on this spectrum.
Arbitrary/Fanciful Trademarks
Arbitrary or fanciful trademarks are the strongest trademarks. Arbitrary trademarks take real words and pair them with goods/services with which they’re not usually used. One of the best examples of this is an APPLE for computers.
Fanciful trademarks are things like gibberish or made-up words. Examples of fanciful trademarks include POLAROID, KODAK, and EXXON.
The advantage of arbitrary and fanciful marks is that they are unlikely to (1) have been picked as trademarks by others because they are so random, and (2) be industry terms that others need to use to describe their own goods/services (and therefore, generally unavailable as trademarks).
The disadvantage of arbitrary and fanciful trademarks is that your customers won’t know by looking at the trademark what the underlying goods/services are. This means more promotional and marketing efforts on your part to get customers to associate the trademark with your offerings.
Suggestive Trademarks
Suggestive trademarks are those who don’t directly describe your goods/services but instead convey the quality or attribute of those goods/services. The classic example of a suggestive trademark is the GREYHOUND mark for bus transportation services. A greyhound is a fast animal, and the quality of speed is a virtue Greyhound Lines wanted to convey to its customers. Another example is VENUS for hair salons, where Venus is known to be the goddess of beauty, and customers want to feel beautiful after they go to a salon.
Suggestive trademarks are the best of both worlds. They are unique enough that they are less likely to be used by others in your industry but descriptive enough that your customers have some idea of what they’re getting with your trademark. It’s the “Aha!” moment you’re looking for!
Descriptive Trademarks
Descriptive marks are trademarks that directly describe some aspect of the feature of your trademark. These trademarks are regularly refused by the Trademark Office for registration. Here are some trademarks that were deemed descriptive and what they were describing:
- COASTAL WINERY (wine made on a coast)
- E-FASHION (Internet service of providing information about fashions)
- OPENING DAY (baseball-related merchandise)
- SCOOP (ice cream)
But, with consistent marketing and promotional activities, you may eventually be able to convince the Trademark Office you’re entitled to full registration rights for your descriptive mark. This concept is known as “secondary meaning” or “acquired distinctiveness” (blog post on this particular topic forthcoming).
Descriptive marks can come in a variety of flavors, including geographically descriptive. If you want to include the name of your hometown or region in your trademark, just know that you may be in for an uphill battle!
Surname refusals are another kind of descriptiveness refusal. Personal names get inconsistent treatment before the United States Patent and Trademark Office (USPTO). You can register a trademark including the first name without much ado. You can register a first + last name combo, so long as the appropriate consent of the named individual is provided. However, if you try to register the last name, be prepared for a refusal.
Generic Trademarks
A generic trademark is a misnomer. If a word or phrase is generic when used in connection with certain goods and services, it can never achieve trademark status. For example, you couldn’t register E-MAIL as a trademark for e-mail services or expect to have any trademark rights in the same.
Here’s another trick. Trademarks can actually commit genericide. This happens when the trademark itself becomes entirely synonymous with the goods/services it’s used in connection with. Some marks that have committed genericide include trampoline, yo-yo, aspirin, and – wait for it – heroin.
Pro-tip for those of you getting ready to introduce something to the market that no-one’s ever seen before: make sure to come up with a generic name AND a trademark to pair with your novel thing. That way, your trademark doesn’t become generic straight out of the gates.
In Closing…
Trademark selection can be both fun and exasperating process. If you’ve got some trademarks in mind but unsure where they fall on the arbitrary–>generic spectrum, you can always reach out to a member of our trademark group at trademarkteam@carneylaw.com for more help. Think you’re ready to move forward with your chosen mark? Read up on our post on clearance searches before you set sail with your new brand!
By: Ashley Long