Choosing a mark is often an exciting first start to a business, or product. It is the first time you put a face to your business, and you want to infuse it with the creativeness, quirkiness, elegance, or gravitas that is appropriate for your business. But it is a process fraught with pitfalls, and that can easily be avoided by understanding some of the basic rules of trademark law.
One of the first problems that we encounter in our practice when advising clients on their trademark choices, is the strength of their trademarks. In order for a mark to be “strong” it must rate fairly high on the USPTO registrability meter.
Generally, marks fall into one of four categories: fanciful or arbitrary, suggestive, descriptive, or generic. Where your mark falls will significantly impact whether it can be registered at the USPTO, and whether you are able to enforce your mark against a purported infringer.
The strongest marks eligible for protection are fanciful and arbitrary marks, because they are inherently “distinctive.” Fanciful marks are invented marks that have no dictionary or other known meaning (for example, BELMICO for insurance services). Arbitrary marks are actual words that have a dictionary meaning, but have no association/relationship with the goods protected (think APPLE for computers). These marks are inherently creative and unusual, and as a result (assuming nobody else already has done it, or uses it), they can be registered on the USPTO’s principal register.
Suggestive marks suggest, but do not describe, what the goods and services do or offer to do. These types of marks are eligible for protection, and are considered “strong” marks, but are not as strong as fanciful/arbitrary marks (for example, GLANCE-A-DAY for calendars).
Descriptive marks are where the pitfall is most glaring. Descriptive marks describe what the goods or services do, and as a result cannot be registered unless the applicant shows “secondary meaning” (in other words, that the consumer can recognize the mark as the applicant’s mark – not easy). Applicants often choose descriptive marks, because they identify the products or services being offered to the consumer. While this may appear logical, it is not helpful when seeking to register and protect a trademark. Example of descriptive marks are WORLD’S BEST BAGEL, for a bagel store, SOFT FABRICS for a fabric store.
Generic marks are the weakest forms of marks. These are common everyday words that are the names of the actual product or service. So for example, MILK for dairy based beverages, or ASPIRIN for pain relief medication.
In other words, think creatively and out of the box when choosing a trademark, your marketing dollars are at stake, and it is well worth the investment to do so.