What is a trademark? A trademark is a name, phrase and/or design that tells the consumer the origin of the goods and distinguishes your goods from those of your competitor. A trademark allows a consumer to select the product that he or she desires for reasons of quality, good will, or affiliation. You know that Kodak film came from Kodak because the trademark is on the box and that a house is being sold by Century 21 because of the sign on the lawn.
Trademarks are broken down into two initial categories, inherently distinctive and non-inherently distinctive marks. To determine if a mark is inherently distinctive or not, it is placed on a "spectrum of distinctiveness." This spectrum starts with generic names that are not trademarks and moves to descriptive, geographic and personal name marks which are non-inherently distinctive. Toward the inherently distinctive side are suggestive marks, then arbitrary and coined marks.
A common problem in selecting a trademark is the temptation to use a descriptive mark. A descriptive mark directly conveys a characteristic of the goods to the consumer. While at first glance this may seem like a good idea, a descriptive mark does little to equate the goods or services with their origin. Some examples of marks deemed to be descriptive are, ARTHRITICARE - descriptive of the medical condition for its intended consumers, FOOD FAIR for a supermarket, and NO SPOT for a car wash system.
To register a descriptive mark with the USPTO, the applicant must prove that the primary significance of the trademark is to identify the source of goods. This is called secondary meaning or acquired distinctiveness. If the consumer thinks that 5 MINUTE glue may have come from any number of companies, the mark has no secondary meaning. If through extensive use and advertising, consumers recognize that 5 MINUTE is the actual brand name of the glue, secondary meaning may exist.
The other types of non-inherently distinctive marks that require secondary meaning are geographic and personal name marks. Non-registrable generic terms can never function as trademarks such as, BAG RACK for a golf bag support, GEL CEL for gel storage batteries, and SPACE SHUTTLE for space craft that carries humans and cargo to space and back, all deemed generic by the courts.
Marks that are inherently distinctive do not require proof of secondary meaning to obtain federal registration. Arbitrary and coined marks are inherently distinctive. An arbitrary mark is one that has no connection with the goods, such as HORIZON banking services or TEA ROSE flour. A coined mark is one that has been invented to function solely as a trademark or a word that is completely out of common usage and totally unfamiliar to the ordinary consumer. Some examples of coined marks are, CLOROX bleach, KODAK photography supplies, and TUM YETO skateboarding equipment.
Suggestive marks are also inherently distinctive. But there is often a fine line between suggestive and descriptive marks and such determination can be rather subjective. Suggestive marks merely suggest a quality or ingredient of the goods. One question to ask is, how much imagination is required for the consumer to reach a conclusion about the nature of the goods? Examples of marks deemed suggestive include, AT A GLANCE for calendars, COPPERTONE for sun tan oil, GOBBLE GOBBLE for processed turkey meat, and WIRELESS NOW! for on-line information services.
So how does this help you select a name for your goods or services? You obviously want to stay away from generic and non-inherently distinctive marks. While coined marks can be very strong, you may have to invest more effort in the promotion of the coined mark. Suggestive marks can be very strong, but you may have to convince the USPTO that the mark is suggestive and not descriptive. It is the author’s opinion that some of the best marks border between suggestive and arbitrary or coined.
Focus on your product and the intended consumer. Is the product targeted at a particular group of people who respond better to a name that sounds scientific or is the product targeted at children who respond to a silly sounding names? Some companies spend a great deal of time and money selecting marks, conducting surveys, and hiring outside agencies to help them.
Do you remember walking along and suddenly a term struck you as a great name for something? Write it down! Brainstorm with your employees or co-workers to come up with a list of possible trademarks. Do not be afraid to scan through resource material to select terms you may want to adapt for a trademark.
The next step is, be prepared to go with your second choice. You should always conduct a trademark search to make sure that someone is not already using your selected mark for related goods. It is all too common that a company or individual gets attached to a mark, going so far as to order printed material incorporating the mark, only to find out that someone else is already using it. This may create a delay in the introduction of your product and waste valuable resources.
Be aware of the category that your mark fits into, inherently distinctive or non-inherently distinctive. Keep your customers in mind when selecting your mark. Conduct a trademark search for all of your marks before you use them. And of course, when you have questions, consult your local trademark attorney.
The above article only applies to United States Trademark Law, and it is for general information purposes only, is current only as of the indicated date, and must not be regarded as legal advice.