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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
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
Suggestive Marks are Registrable but not
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
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:
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:
So How Would a Trademark Attorney Advise You
to Choose a Trademark?
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
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