Why Legal and Marketing Conflict on How to Choose a Trademark

by Donna Ray Berkelhammer

If you work with startups as I do, one of the first issues is choosing the company or product name.

I have worked with countless marketing companies that advised their clients to "be descriptive" when selecting the name of a company or product.  Having a name that describes an aspect of the product or service allegedly makes it easier to market that product.  You allegedly don't have to spend as much consumer education or advertising.

But, truly descriptive marks get relatively little protection under the trademark law.  In the long run, you may spend more in registration costs and enforcement costs than you save in advertising costs.   And a descriptive name doesn't stand out as well in the marketplace.  So I advise my clients to make up a word to use as a trademark (known as a fanciful or coined trademark) or adopt a word that has nothing to do with their product or service (an arbitrary mark).

Some of our most-recognized brands are words that were made up by companies:  KODAK for photographic chemicals and equipment; XEROX for photocopying equipment;.  Other well-known brands are arbitrary marks:  APPLE or SUN for computers, COMET for kitchen cleaner, JAGUAR for car.

Types of Marks

Generally, marks fall into one of four categories: fanciful or arbitrary, suggestive, descriptive, or generic. What kind of mark you choose significantly impacts both its registrability and enforceability.  The strongest and most easily protectable types of marks are fanciful marks and arbitrary marks, because they are inherently distinctive. These marks are also easier to register because it is more unlikely that someone else has registered something similar.

Suggestive Marks are Registrable but not Advisable

Suggestive marks suggest, but do not describe, qualities or a connection to the goods or services. Suggestive marks are registrable and are also considered "strong" marks, like fanciful and arbitrary marks.  Suggestive marks include COPPERTONE for suntan lotion, MUSTANG for sports cars and GREYHOUND for bus service.

But there is a fine and very subjective line between what is suggestive (and allowable) and what is descriptive (and not allowable).  It is often hard for a trademark attorney to predict how an application will be received by a trademark examiner.

Merely Descriptive Trademarks Cannot Be Registered

Words that "merely describe" an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods or services, however,  are not registrable as trademarks unless they have been used and heavily marketed for at least five years (known as acquired distinctiveness).  Descriptive marks are considered very "weak" trademarks and hard to protect. It may be difficult or impossible to stop infringement of a descriptive mark.

Examples of "merely descriptive" trademarks are:

• CREAMY for yogurt
• OATNUT for bread containing oats and hazelnuts
• E FASHION for software for consumer use in shopping via the Internet
• 1-888-M-A-T-R-E-S-S for telephone shop-at-home mattress retail services
• URBANHOUZING for real estate services
• HONEY-BAKED for hams
• ICE for beer
• JET for spray nozzle
• L.A. for low-alochol beer
• ULTIMATE BIKE RACK for bike rack and design
• VISION CENTER for optical clinics

Generic Trademarks Cannot Be Registered

Generic marks are also forbidden from registration.  A generic term is the common name for a type of product made by multiple companies, such as television, baked beans or beer.  Words used in this way are not distinctive and do not point to a particular company as the source for the product or service.

Examples of generic marks are:

• BEERMAN for beer-vending character
• CONSUMER ELECTRONICS for magazine title
• LITE for low-calorie beer
• SAFARI for hunting expedition hats and jackets
• SMART POWER for semiconductors
• SUPER GLUE for strong-bonding, rapid-setting glue
• SURGICENTER for surgical center
• YOU HAVE MAIL for phrase to alert of an email arrival.

So How Would a Trademark Attorney Advise You to Choose a Trademark?

• Make up a word.  What are some Greek or Latin roots that relate to your product?  Can you combine the owners' names or initials into a word? Can you shorten your company name into something catchier (National Biscuit Company = NABISCO)?  What is a combination of words describing your product that you can combine into an acronym or other word as a trademark (MICROSOFT= Software for microcomputers)?  For example, a tutoring company might be CELEREDU TUTORING (combining the Latin roots "celer" for quick  with "edu" for learning).  Or take it a step further and make it ACCELER-ED TUTORING, building upon the common word "accelerate" to drive home the concept of fast results, as well as playing on the Latin roots.
• Use a random word.  And speaking of common words, why not use a common word that has nothing to do with your product?  Your tutoring company could be SAILFISH TUTORING or RATATOUILLE TUTORING or NASTURTIUM TUTORING.
• Use a word that suggests what your product or service does.  Perhaps LAMPLIGHT TUTORING or SUNSHINE TUTORING would suggest the concept of a light bulb going off when a student learns something new, or PENCILS AND DESKS TUTORING or ELBOW GREASE TUTORING would suggest the tutoring company makes students work hard to learn.

A final piece of advice from the legal department:  Before you settle on a trademark,  make sure it is not infringing on a pre-existing mark.  Contact a trademark attorney for more information.

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