What’s In a Name? Tips for a Protectable Trademark

Before becoming dead set on adopting a particular word trademark, make sure it is worthy of protection first. Doing your homework can both inspire during the naming process and later decrease the chances of discarding a weak word mark.  This is where the spectrum of distinctiveness comes into play.

The spectrum of distinctiveness illustrates the strength of a mark. The more distinct the word mark is, the stronger it is in terms of legal protection. The reason for this is that a trademark is meant to identify the source of the goods or services being offered. A generic or descriptive term refers to the goods or services, but does not call to mind the source providing them.

Generic
A generic term is not distinctive and thus cannot be protected as a functioning trademark or registered as a trademark. A name is generic if it is the common term for a class of goods or services. Some examples of generic terms would “Coffee” for coffee, “Furniture” for furniture, or “Accounting Services” for accounting services.

A generic term is not distinctive and thus cannot be protected as a functioning trademark or registered as a trademark. A name is generic if it is the common term for a class of goods or services. Some examples of generic terms would “Coffee” for coffee, “Furniture” for furniture, or “Accounting Services” for accounting services.

It’s worth noting that if you offer a product or service first of it’s kind, avoid turning your trademark into a generic term. Come up with a generic term to use and promote separately so that your trademark doesn’t become the commonly used term. For example, Rollerblade is Rollerblade, Inc.’s trademark and “inline skate” is the generic term for its product. The term “escalator” is now a generic term, but it was the trademark of Otis Elevator Co. for their product “moving stairs”. The company’s interchangeable use of their trademark as a generic term lost it exclusive use of “escalator” as a trademark.

Descriptive
Descriptive terms are trickier because on the whole they are not distinctive if they are merely descriptive or deceptively misdescriptive. A merely descriptive term describes an aspect of the goods or services such as “an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services.” TMEP §§1209.01(b). For example “Quick Copy” to describe copying services or “Cozy Comforters” for blankets. Other types of descriptive terms include surnames, geographic identifiers, and foreign translations.

A descriptive term may be adopted as a trademark if it acquires distinctiveness through a secondary meaning. In other words, the descriptive term is used continuously and exclusively such that the consuming public’s primary significance with the term is not the specified goods or services but with their source. See TMEP §§1212. An example of a descriptive mark with secondary meaning would be “Raisin Bran” or “Bank of America”.

Suggestive
Suggestive marks are inherently distinctive and require an extra step to connect the source to its goods or services.  Unlike descriptive terms, there is no immediate idea that calls to mind the goods or services. See TMEP §§1209.01(a). “Mustang” is a good example of a suggestive mark because it although doesn’t immediately refer to a car, it does connect the car with speed and horsepower.

Arbitrary
Arbitrary marks are also inherently distinctive and consist of ordinary words that do not relate to the goods or services in a descriptive or suggestive manner. A common example used to illustrate this category is “Apple Computers.” Another is “Virgin Mobile” for telecommunication services.

Fanciful
Not only are fanciful marks inherently distinctive, but they are also the strongest trademarks in terms of protection. Fanciful marks consist or coined or made-up words. Some examples are “Kodak”, “Mattel”, and “Starbucks”.

Practical Considerations
From a marketing standpoint, there is an incentive to adopt marks that are closer to generic and descriptive terms. Such marks signal to consumers a more obvious association between a business and its goods or services. However an established, more inherently distinctive mark diminishes the off chance that consumers will confuse your business with competitors (i.e. Apple Computers or Kinko’s).

Fanciful and arbitrary marks are the strongest in terms of legal protection and distinctiveness. Yet the drawback here is if the market comes to associate the trademark with the generic term for your business’s goods or services (i.e. Xerox for copying, Kleenex for tissues, Rollerblades for inline skates). To keep your mark from becoming weak or generic, promote awareness in the marketplace about the difference between your mark and the generic term. Here are some things you can do to maintain this distinction: avoid using the trademark as the name of the goods or services in internal and trade-related communication; draw attention to both terms properly in advertising to consumers; and develop and promote a generic term if one does not already exist for your goods or services.

A suggestive mark is a good option if you wanted the obviousness of a descriptive mark. While suggestive marks are not as strong as fanciful or arbitrary ones, they remain protectable. A suggestive mark is a good option if you wanted it to signal a more immediate association between your mark and the goods or services provided. Also, there’s less of a chance it can take the place of a generic term. Just be sure to test that the mark does not primarily describe or call to mind your goods or services first, but still requires some level of imagination.

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