Thursday, August 16, 2012

Is your trademark "fanciful"?


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. FrigidaireiPadXeroxWalkman, 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.  Aspirincellophaneescalator are examples of words that started as trademarks, but have become a part of the vernacular.

1 Comments:

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