How To Create a Strong Trademark

Fanciful Arbitrary Suggestive Descriptive Generic

 

HOW TO CREATE A STRONG TRADEMARK?

Not all marks are perceived in the same manner. There’s a spectrum on which trademarks are usually judged. These broad, informal classifications range from generic (will not be granted a federal trademark registration) to fanciful (definite trademark registration). Let’s start from the strongest, moving down to the weakest.

Fanciful

According to the USPTO, fanciful marks comprise terms that have been invented for the sole purpose of functioning as a trademark or a service mark. Most likely, these are made-up words i.e. just random letters put together, not having any particular meaning. Famous examples of such marks are KODAK, EXXON and XEROX. While these marks have the strongest changes of going through to registration, to build brand value and recognition for such marks, one would require a lot of resources and extensive marketing such that the consuming public would associate the products/services being offered with the brand name.

Arbitrary

This refers to marks that are basically words in everyday usage or may even be well-known words, but when used in conjunction with the specific products/services, are completely unrelated. These may also be words that are used in an unexpected or uncommon way.  Examples include NIKE for shoes, APPLE for computers and CAMEL for cigarettes. If you are unable or unwilling to create a new word as your brand name, arbitrary marks are your best bet because these are words already in existence but just not related to the products/services you will be/are offering.

Suggestive

This is the last of the three categories that would directly register in the Principal Register: these are marks that require some imagination and some thought process to reach the products/services. In essence, these marks are merely suggestive as to what’s being offered with the mark. For this analysis, past cases give the impression that incongruity is a strong indication that a mark is suggestive rather than merely descriptive. What the USPTO looks for when analyzing such marks is a “subtle leap in thought” or a “mental pause” where consumers would have to take a few seconds to try and guess what products/services are being offered with the mark.

Small brands or startups should preferably go for this type of mark because they do not have significant resources to extensively market and create awareness about the brand. Not only would a suggestive mark advertise the brand name, it would also simultaneously provide a hint as to the products/services being offered. HOWEVER, it can be quite a thin line between suggestive and descriptive marks, so one must be careful to tip over to this side of the spectrum.

Descriptive

A descriptive mark “describes a function, use, characteristic, size or intended purpose of the product.” If a mark is merely descriptive, this means that the words and/or design elements are all descriptive of either the products/services themselves or a characteristic of the same. Interestingly, logo marks i.e. marks with design elements may go through to the Principal Register even where the entire literal element is considered descriptive because the design element may just be unique enough that the entire mark as a whole would avoid the “descriptiveness” issue and register. Of course this would most likely require a “disclaimer” for the literal element. See this post for more on disclaimers.

Descriptive is not just a direct reference to the products/services, but even a feature/characteristic of the products. This means sometimes even laudatory terms such as BEST, GREAT, BETTER, ULTIMATE may be considered descriptive because they may be in reference to a characteristic of the products/services offered with the mark. Sometimes, even abbreviations or shortened versions of the mark (e.g. COMIC CON for COMIC CONVENTIONS) may be considered descriptive if these are well-known abbreviations. Geographic locations are also considered descriptive, even if these are in reference to the place where the products/services originate.

Initially, if the mark is unable to overcome the “descriptiveness” issue and is unable to prove its “suggestive” nature, then it would still register, but only in the Supplemental Register i.e. a secondary register that still affords some of the main trademark rights. The good news is that with time and acquired distinctiveness, such “descriptive” marks can eventually register in the Principal Register.

Generic

This category is fairly straightforward: when the entire mark is comprised of generic words, the mark is unregistrable. The focus is on (i) the genus of products/services being offered and (ii) whether the public would make the connection between the mark and the products/services. If the mark consists of a word or several words that are commonly used to describe the products/services being offered, then such a mark would be deemed “generic”. Once the USPTO considers a mark “generic”, this is a difficult issue to overcome. Examples of famous trademarks that have become generic over time include ESCALATOR, YO-YO, THERMOS, CELLOPHANE and ZIPPER. All these marks now refer to specific products. Interesting side note: GOOGLE is almost a victim of becoming a generic mark now due to its frequent use as a verb i.e. let’s Google this to find out!

Choosing a trademark is not always about liking a particular name or design. If it’s too easily recognizable for the products/services it offers, odds are the USPTO may not grant it.

Print Friendly
SHARE
Previous articleLas Vegas Raiders: A Winning Bet or Losing Gamble?
Next articleUSE IN COMMERCE — WHAT DOES IT MEAN?
RENUKA RAJAN is a​ NY-licensed trademark attorney in the Nagpur office at LegalForce RAPC. She specializes in ​trademarks, copyrights and office action responses. ​Renuka received her ​B.A. LL.B. (Hons.) ​degree from ​National Law University​, Delhi​ and her ​LL.M. in IP from the George Washington University Law School (Washington, DC), where she ​was also a Thomas Buergenthal Scholar. When she is not busy advising her clients, she's usually found either in the gym or singing along to different songs on her guitar with the same six chords. She is an avid Harry Potter fan and is always up for a healthy argument.

Leave a Reply