Part 1 – Trademark Selection
Whether you are contemplating organizing a new business, or positioning your existing business to launch a new product or service in the marketplace, selection of a new trademark is the most critical phase in establishing trademark rights. Under Trademark Law, a trademark is a word, phrase or symbol used to identify and distinguish the source of goods and services of a person or company. The role that a word, phrase or symbol must play to become a “trademark” is to identify the source of one seller’s goods or services and distinguish that source from other sources. Simply stated, a trademark answers the question: who are you? If the word, phrase or symbol performs that role, then the law deems it to be “distinctive” and legally protectable (and registrable).
Ultimately, the name of the trademark you select will determine the degree of available trademark protection afforded to the chosen trademark and whether it may be registered with the United States Patent & Trademark Office (USPTO). It is at the early stages of organizing a new business, or developing a product or service, that the prospective trademark owner has the greatest control over his/her future ability to prevent others from using a similar or identical trademark. From a legal standpoint there is little question that he/she should select a highly distinctive, strong trademark without any descriptive, surname or geographic connotations.
The reason why a prospective trademark owner should avoid using descriptive, surname or geographic connotations is because, for the most part, the terms are unregistrable and the USPTO will refuse to register the trademark. If the prospective trademark owner is able to avoid using these unregistrable terms, and chooses to use arbitrary, fanciful or suggestive terms instead, he/she will achieve maximum protection under Trademark Law, with the federal and state courts, and he/she can (generally) expect few difficulties in obtaining trademark registration, both in the United States Patent & Trademark Office (USPTO) and in foreign trademark offices. If the prospective trademark owner cannot avoid using unregistrable terms, he/she should expect registration problems and also difficulties both in protecting his/her trademark against infringers, counterfeiters, hijackers and other dubious lurking in the marketplace, and in defending it from attack by others. These difficulties can increase as his/her sales and advertising under the chosen trademark grow and as he/she extends the use of the trademark to new geographical areas and to new product/service classifications.
The takeaway from the discussion above is that a potential trademark owner should strongly consider selecting a trademark that is a highly distinctive and comprised of arbitrary, fanciful or suggestive terms. However, not all people will agree with the foregoing view. There are few outliers who hold that selecting a highly distinctive, strong trademark is unnecessary and may be a detriment to the business. People that take this this view generally argue that arbitrary, fanciful and suggestive trademarks take significant marketing dollars in order educate the consumer as to what products or services the trademark identifies. In other words, if a potential trademark owner was to use a generic, descriptive or geographical term to identify his/her product or service (e.g., San Clemente Coffee Shop), the consumer will automatically understand what the business owner is selling and no marketing dollars are necessary. These arguments certainly have color, validity for saving money and being able to immediately connect with the consumer as to what the product/service is, but the question really comes down to whether the business owner really wants to be another black wetsuit in the surf lineup, unrecognizable to most, as opposed to being a brand that stands out and is memorable to consumers for the long-term. After all, federal trademark registration is a form of insurance which protects what is or may become a highly valuable asset both against theft and against challenge.
Selecting a Highly Distinctive, Strong Trademark
The stronger your trademark is, the more easily you can prevent others from using it without your permission. Weak trademarks can be difficult and costly for you to defend because they don’t have the same legal protections as stronger trademarks.
Fanciful, arbitrary and suggestive words used as trademarks are regarded as being the strongest and most distinctive trademarks. A fanciful trademark is a word that is coined or invented for the express purpose of functioning as a trademark (e.g., Etsy, eBay or Walmart for an e-commerce retail platform). A fanciful trademark could also be any obscure or archaic word not familiar to buyers in the specific marketplace. An arbitrary trademark is a word that is in common usage but is arbitrarily applied to the goods or services that the trademark will represent (e.g., Amazon for an e-commerce retail platform). An arbitrary trademark will have no relation or significance when applied to the goods or services. A suggestive trademark is a word that suggests but does not directly describe some aspect of the goods or services (e.g., Coppertone for sun-tanning products).
Weak trademarks are much more difficult to protect against competitors and often are not registrable under Trademark Law. These include descriptive, geographical, surname and generic trademarks. A descriptive mark describes some characteristic, ingredient or function of the product (e.g., “Neoprene” describes what material used to make the wetsuit). Little is left to the imagination with a descriptive trademark. It is difficult to obtain exclusive rights in descriptive marks. Moreover, if a mark is held to be “merely descriptive” it is not federally registrable, which means that anyone can use the mark. Descriptive marks are not federally registrable on the Principal Register unless the applicant can demonstrate secondary meaning, i.e., that the consuming public has come to associate the mark with a source or origin of the goods. Generic terms cannot be registered as trademarks. You can’t register the term “surf board” for a surf board and prevent others from using the term to describe their surf boards.