Is your trademark "fanciful"?
If there is one question that is
not asked enough in the realm of intellectual property, it is, “Is your
trademark you are considering strong enough?” Trademark registration is granted
on a number of bases, one of the most important being the relationship of the
mark to the goods and services. It is essential to find a mark as unrelated as
possible to your business’s goods or services for the best trademark
protection. That relationship, in turn, has an effect on the “strength” of the
mark and, therefore, the mark owner’s ability to take advantage of the rights
and privileges granted by registration.
There are four categories of word
marks which can be registered.
1) Fanciful - the strongest trademark.
The mark has no relation to the business’s goods and services, and that creates
a presumption that the mark’s existence is owed to them. Kodak, Polaroid, Kleenex, Twizzler, M&M’s, Snickers, Linux, and Google are
examples of fanciful trademarks. They
are unique, made-up words created as trademarks that had no bearing on the
related goods (cameras, tissues, candies, computer operating systems, and web
site indexing tools).
2) Arbitrary – a strong mark, but weaker than a fanciful mark. The
mark has no relation to the product, but the word already exists. “Apple” and
“all,” for example, are real words,
but there is nothing about Apple or All that might lead a prospective
purchaser to associate those words with computers or laundry detergent.
3) Suggestive - the mark suggests something about the product;
however, the connection between the mark and the goods or services must still
not be completely obvious. Frigidaire,
iPad, Xerox, Walkman, and Mercury are examples of marks
“suggesting” goods associated with cold air (refrigerators), pads to write on
(hand-held computing devices), equipment used in xerography (copiers), a man
walking about (portable, personal stereos), and getting somewhere as fast as a
Roman god’s messenger (motors, e.g. outboard motors for boats). Note that some of these examples are unique,
made-up words. However, their
lexicographic origins “suggest” something associated with the prefix or suffix.
4) Descriptive - the mark describes the product. This is a very weak
trademark that requires "secondary meaning" in order to gain
trademark protection. Most descriptive marks do not gain trademark protection.
The mark owner must prove that the public can identify that the product comes
from the mark owner. The slogan, “The milk chocolate melts in your mouth, not
in your hands” is descriptive of any chocolate candy coated with a hard shell,
but after many years of continuous use the consuming public associated that
slogan with M&M’s chocolate
candies, entitling the maker to registration.
Two categories of terms that
won’t be accepted for registration are worth mentioning. Obscenities will be rejected. A registration application will inevitably be
rejected if the word(s) is Generic –
words that are the same or equivalent to the goods or services. These words can never be registered as trademarks, and they are given no
protection whatsoever. Remember that
trademarks tell the purchasing public the source of the goods and services, and
generic terms can’t convey that information because the source is not
distinguishable from other business sources if the mark is generic. It is also important to keep in mind that it
doesn’t matter whether the generic terms are real words or made up words. For
example, “apple” is a real word, and Apple
was acceptable for registration in connection with computers, but that word may
never be the trademark of a grower or seller of apples. Girlgear
is an example of made-up word, but it still can’t be registered as a trademark
of athletic apparel (also known as gear) for girls.
These concepts must be kept in
mind when considering the right name for marketing purposes in order to develop
a trademark that’s just right for each business’s image.
Ironically, some trademarks
become generic words. Aspirin, cellophane, escalator are
examples of words that started as trademarks, but have become a part of the
vernacular.
