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Getting fancy makes for a stronger trademark

Updated: May 13, 2020

Originally written by Katelin Kennedy

One of the first things many startup founders do when setting out to start a new company is think of a name. You may have a brainstorming session with your co-founders to think of the perfect name---and hopefully what you come up with is more than just another jumble of consonants ending in -r, or a word with -ly at the end (more on that later). When thinking of a name to build your brand around, there are a few things you should keep in mind from a trademark perspective.

As a general rule, to qualify for registration and protection as a trademark, a word, phrase, or logo must be distinctive. Meaning, the mark should help consumers identify and distinguish the goods and services of one company from those of its competitors. The distinctiveness, and the relative strength or weakness, of your proposed mark will be assessed based on your use of the particular mark in connection with your goods or services, and where your mark falls on a continuum made up of the following categories.

A generic or merely descriptive mark is a non-starter.

A generic term or a word or phrase that is "merely descriptive" of the good or services for which it is used will not be approved by the USPTO. There are many considerations relevant to the analysis of whether a mark may be generic or fatally descriptive, and the context of the mark's use or intended use is critical.

  • A generic mark is one that the relevant public would understand to have generic significance.

  • A descriptive mark is one that "describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services." TMEP 1209.01(b)

For example, an application to register the trademark "Bike Store" for a store that sells bikes will be rejected by the USPTO. In that context, Bike Store literally means a store that sells bikes. This doesn't mean you can't use "Bike Store" on the sign outside of your Bike Store; but, you won't be able to prevent a competitor from using the same generic terminology for their bike store across the street.

A few other examples: "Footlong" has generic significance in relation to sandwiches; "Superjaws" is merely descriptive of hand tools that include jaws for gripping; and "CAESAR! CAESAR!" is merely descriptive of salad dressing (and is not made distinctive by the repetition or exclamation points).

Misspelling a word will not save a proposed mark from being rejected as merely descriptive. In a real case, the Trademark Trial and Appeal Board held that "Urbanhouzing" would be perceived by consumers as the equivalent of the descriptive term "Urban Housing." Shocker, I know. Misspelling words is not a viable tactic to get around a likelihood of confusion issue with an existing mark either.

It's worth noting that a descriptive mark may be registered if you can prove the mark has acquired secondary meaning, but that's an uphill battle. You have to prove that the mark has become distinctive as applied to your goods or services. It takes a long period of continued use (>5 years) to develop sufficient brand recognition to prove an otherwise descriptive mark has acquired distinctiveness. For example, "sharp" is descriptive of a characteristic of TVs, but it has acquired secondary meaning in the context of TVs to identify Sharp as a manufacturer of TVs. The key is that when consumers think of "sharp" and "TVs" they primarily think of the brand, rather than the descriptive characteristic.

Time to get more creative.

1. Make it suggestive

Suggestive marks "require imagination, thought, or perception to reach a conclusion as to the nature of those goods or services." TMEP 1209.01(a). The element that distinguishes a suggestive mark from a merely descriptive mark is incongruity. In other words, the goods or services represented by the mark are not exactly apparent. Take "Urban Safari" for example---you don't think of urban areas when you think of a safari, but you might use your imagination to conclude that the company offers adventure tours through a big city. Other examples of suggestive marks include: Airbus (flying transportation for the masses, aka planes), Coppertone, Chicken of the Sea. Suggestive marks are registrable and protectable.

2. Make it arbitrary

Arbitrary marks are words or phrases with an alternate meaning that is completely unrelated to the way in which the mark is used in connection with your goods or services. The most obvious example of an arbitrary mark is Apple (for computers, phones, etc). Other examples of arbitrary marks include: Shell (for gas), Blackberry (for phones), or Camel (for cigarettes). Arbitrary marks are registrable and protectable.

3. Or get fancy

Fanciful marks are made up words that have no alternate meaning. The classic example is Google, although Google's trademark protection is threatened by the generic use of it as a verb to describe online searching. Other examples of fanciful marks include: Hooli, Trello, Twitter, or Skype. Fanciful marks are among the easiest to get registered, but it may be a bit harder to come up with a new word that is also marketable.

Thought of a name that you love that's suggestive, arbitrary, or fancy? Read more about why you should get a clearance search to make sure you won't have a likelihood of confusion issue.

*This blog provides general information for educational purposes only. It is not intended to constitute specific legal advice and does not create an attorney-client relationship.*

#trademarkbasics #startups #trademark

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