When you’re thinking of your company’s name, slogan and/or tag line, be sure to weigh its “trademarkability.” Yes, yes, I realize “trademarkability” is not a real word, but it leads me to an important concept about trademark protection and your business. The short of it is, not all trademark protection is created equally, and the protection afforded is directly linked to the legal strength of the trademark. In some cases, marks may be denied court protection altogether.
Generally speaking, having a registered trademark through the United States Patent and Trademark Office (USPTO) permits you to enforce through the court system your exclusive right to use your mark against a broader variety of similar marks, for a broader variety of goods or services. The continuum of protection rests with the legal strength of your mark, and determines whether or not the same may be registered on the USPTO’s Principal Register, or even the Supplemental Register (the places that demonstrate the marks exist and are entitled to legal protection).
Right about now, you’re probably wondering, “what the hell is this guy talking about with the “legal strength” of the mark?!” Well basically, a classification system is used to determine any given mark’s strength, and in turn, the amount of protection that mark will receive based on its classification. Generally, the more distinctive the mark, the stronger the protection available under the law. Here’s a quick and dirty breakdown of the five (5) main classifications of word marks (aka names, slogans and/or tag lines) in order from most to least protection:
Fanciful Marks (aka Coined Marks)
A fanciful mark is “fancy” talk for MADE UP! These are words that are made up for the sole purpose of functioning as a trademark. BUT, once you have invested time and money promoting a fanciful trademark, it is easy to enforce your mark’s protection to expose, prevent and likely punish infringers from trying to profit from your mark because the infringers are hard pressed to provide any plausible explanation for their use the mark. As a result, fanciful marks receive the highest level of protection as a coined word has no known meaning and therefore has no possible association with the good or service for which it is used. This makes fanciful trademarks ideal from a legal standpoint and wholly registarable on the Principal Register.
Some examples include KODAK for photographic equipment, UNIX for a computer operating system, REEBOK for shoes, and XEROX for photocopying equipment.
An arbitrary trademark is a common word with a common meaning, but the meaning is unrelated to the goods or services offered for sale under the mark. These words are usually considered part of everyday vocabulary, but the kicker is that they have no logical relationship to the goods or services for which they are used. Whether a word is arbitrary or not depends, for the most part, on the context. Think of Apple. Apple sells computers and other electronics, not round edible fruit, and therefore the mark is arbitrary in connection with the goods and services offered by the company. Generally, arbitrary marks receive the highest level of protection next to fanciful (made up) marks and are registrable on the Principal Register.
There are many examples of arbitrary marks, however some common arbitrary marks include APPLE for computer, BEEFEATER for gin, COMET for kitchen cleaner, and JAGUAR for a car.
Suggestive marks generally require that the consumer use some sort of “imagination, thought or perception to reach a conclusion as to the nature of the goods or services.” This means that a suggestive mark generally vaguely suggests a desirable characteristic of a good or service, which would require the consumer to make some sort of “mental leap” to actually connect the mark and the goods or services for which it is used. As a result, suggestive marks are “Inherently Distinctive,” and they are therefore registrable on the Principal Register without proof of Secondary Meaning (described below), just like Fanciful and Arbitrary Marks. In short, a trademark does not have to completely lack all meaning in relation to the goods or services for which it is used to be registrable.
A few examples of suggestive marks are: ACOUSTIC RESEARCH for stereo loudspeakers; HABITAT for home furnishings; Q-TIPS for cotton-tipped swabs; and CHICKEN OF THE SEA for canned tuna fish products.
On the flipside, Descriptive marks simply describe or immediately convey knowledge about an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services. This means they are NOT “Inherently Distinctive,” and consumers can readily connect the product or services with the mark based on its descriptive nature. Descriptive marks are general precluded from registration on the Principal Register, but may sometimes be registrable on the Supplemental Register. However, it is worth noting that, in recent years, the USPTO has allowed the registration of fewer and fewer descriptive marks. In some cases, descriptive marks may acquire distinctiveness through Secondary Meaning, and therefore, become registrable on the Principal Register. Secondary Meaning may be established when the mark is so effectively marketed by the producer of the good or services, consumers come to immediately associate the mark with only that producer of that particular kind or good or service.
A few examples of suggestive marks are: SHAKE AND BAKE for meat seasoning; TASTY for bread; and TRIM for nail clippers.
Generic marks are words or symbols “that describe the product or service primarily as the common or class name for the goods or services.” These terms essentially identify a product or service.
For example, “cupcake” is a generic term that refers to small individual serving cakes. These individual cakes may be made by any number of producers who are free to use the term cupcake to advertise their version of the cakes. In short, no individual or entity will be granted trademark protection for use of the term “cupcake,” and any such term is not regsitrable on either the Principal or Supplemental Registers. (also see: My Trademark is Registered, Now What?)
Bongiovi Law Firm works closely with its clients to ensure the path of least resistance in obtaining the best trademark for the individual or entity. Please contact us at 702-485-1200 with any questions or concerns regarding the registration of your mark.