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What’s in a Name? Considerations for Choosing a Trademark

on Friday, 19 December 2014 in Technology & Intellectual Property Update: Arianna C. Goldstein, Editor

When branding your business trademarks are king, but there are considerations beyond choosing a trademark distinct from that of your competitors. The “strength” of a trademark weighs heavily on the ability to obtain federal trademark protection and the validity of such a mark in an enforcement proceeding. The strength of a trademark is measured on the following spectrum:

Fanciful > Arbitrary > Suggestive > Descriptive > Generic

where the categories are arranged from most to least protection for marks classified in a particular category. A description of the categories of marks and examples of marks in each category is as follows:

  • Fanciful: marks that are made-up and have no independent meaning, such as Kodak (for film) or Exxon (for oil)
  • Arbitrary: marks that are assigned randomly to a product, such as Crest (for toothpaste)
  • Suggestive: marks that suggest a connection to the product, such as Wrangler (for jeans) or Coppertone (for sunscreen)
  • Descriptive: marks that describe the underlying product, such as Wheaties (for wheat cereal)
  • Generic: marks that actually represent the underlying product, and are used interchangeable to describe all like product regardless of source, such as Zipper (for a zipper) or Pop (to describe a carbonated beverage)

At their core trademarks are used to identify sources of goods, but in allowing an entity to select and protect a trademark there must be a proper balance between allowing a company to choose a trademark that describes their product versus leaving marks and words available for general use. For example, it would be inequitable for a company to obtain the trademark “Chocolate” under which it will sell chocolate bars, as it would preclude all other companies from using the word chocolate to describe their chocolate products. The trademark “Chocolate” for a chocolate bar is a generic word when used to brand actual chocolate bars, and is therefore not eligible for trademark protection. Additionally the context for the use of a mark matters. The same mark “Chocolate” used to describe semi-conductors would be considered arbitrary as the mark is randomly assigned to a brand of semi-conductors and therefore eligible for federal trademark protection.

Marks that fall into the generic category are never eligible for trademark protection, while marks that fall into the descriptive category are only eligible for federal trademark protection after they acquire secondary meaning, such that consumers readily identify the source of goods associated with the mark. Because trademark protection is such an extremely useful mechanism to protect the brand of your company, it is essential to choose a mark that falls into one of the first three categories, preferably the fanciful category. Choosing a mark that falls into the fanciful, arbitrary, or suggestive generally categories allows for immediate eligibility for federal trademark registration, which offers the most rights to the trademark owner. So, when deciding on a trademark be sure that you are comparing your underlying mark to the proposed mark and weighing whether or not the mark describes the underlying good or uses words that are generic of the product. Avoiding marks that are descriptive or generic will give you a stronger trademark and better brand protection.

AriAnna Goldstein

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