Things to Consider When Selecting a Trademark

Trademark selection should be a necessary consideration for anyone starting a business or launching a product or service into the marketplace. The trademark you select will ultimately determine whether your trademark may be registered and the level of trademark protection afforded to your trademark. The following discussion outlines a few items to consider when selecting a trademark.

Spectrum of Distinctiveness – Strength of Trademark

There are four categories of trademarks within the spectrum of distinctiveness – (1) generic trademarks, (2) descriptive trademarks, (3) suggestive trademarks, and (4) arbitrary and fanciful trademarks.  As discussed on other pages of this site, if a word, phrase, tagline or design is not distinctive, it is not considered a trademark and thus cannot be protected.  Arbitrary and fanciful trademarks are inherently distinctive. Suggestive trademark can be inherently distinctive. In certain circumstances, descriptive trademarks can acquire distinctiveness by obtaining secondary meaning in the marketplace. Note, generic trademarks are never distinctive, can never achieve trademark status and cannot be registered or protected.

Fanciful Trademarks

A “fanciful” trademark is a word that is coined for the express purpose of functioning as a trademark. It could also be an obscure or archaic term not familiar to the average consumer.  “Coined” or “fanciful” trademarks consist of invented words.  Firewire, Quiksilver, Outerknown, Billabong and Volcom are great examples of fanciful or coined trademarks.  Coined and fanciful words are conceptually the strongest of all trademarks, in that their originality and uniqueness is likely to create a substantial impact on the average consumer’s mind.  Another aspect of coined or fanciful trademarks is that they have no meaning other than their trademark significance. Coined and fanciful trademarks are generally the easiest to clear in a trademark search and are the easiest to register.  Although coined and fanciful trademarks receive strong protection under the law, business owners will generally spend significant time and money advertising so that potential customers associate the trademark with the business.

Arbitrary Trademarks

“Arbitrary” trademarks are common words found in the dictionary, but when used with a business, product and service, the arbitrary word neither suggests nor describes any ingredient, quality or characteristic of the business, product or service.  An arbitrary word mark does not suggest or describe anything about the business, goods or services.  Note, it is a myth that a common word found in the dictionary cannot be a trademark.  Apple for computers is a great example of an arbitrary trademark.  Apple is a common word found in the dictionary, but neither describes nor suggests anything about the nature of computers. Lost, Mayhem and Album for surfboards are all great examples of arbitrary trademarks.  Lost, Mayhem and Album are obviously common words found in the dictionary, but none of those terms describe or suggest anything about the nature of surfboards. Although arbitrary trademarks receive strong protection under trademark law, business owners will generally spend significant time and money advertising so that potential customers associate the trademark with the business.

Suggestive Trademarks

A “suggestive” trademark suggests, but does not directly and immediately describe the business, goods or services. Suggestive trademarks are considered to be the middle ground between purely fanciful and descriptive trademarks.  The strength of a suggestive trademark under the law is fact based.  In other words, some suggestive trademarks are weak and others are strong.  The descriptive-suggestive borderline is hardly a clear one.  The most popular method to determine whether a trademark is suggestive or descriptive is the mental leap or imagination test.  The more imagination that is required by an average consumer to associate the trademark to the business, product or service, the more likely the trademark is suggestive and not descriptive. While a descriptive trademark directly and clearly conveys some information about the ingredients, qualities and characteristics of the product or service, the “suggestive” term only indirectly hints at these things.   Coppertone for sun tan oil is an example of a suggestive trademark — suggestive of the resulting skin color after using the tanning oil.  Netflix is a great example of a suggestive trademark — the subscription service suggests movies or “flix” that are ordered online.  And Town & Country is another great example of a suggestive trademark — suggestive of surfboards designed for both the South Shores and North Shores of Hawaii.

Descriptive Trademarks

“Descriptive” words, terms or phrases directly and immediately convey some knowledge of the characteristics of a business, product or service. Trademark law prohibits descriptive trademarks from being registered or protected unless secondary meaning is proven by the trademark owner.  We discuss secondary meaning or acquired distinctiveness at length on other pages of this website.  Trademark law has long held that words, terms or phrases that are descriptive of the qualities, ingredients or characteristics of a product cannot be protected as trademarks.  Descriptive words, terms or phrases are regarded as being in the public domain and can be freely used by anyone or any business in the marketplace.  The rationale behind this rule is that all sellers in the marketplace need to use descriptive terms to truthfully describe their business, products and services.  If a business had the ability to claim exclusive rights over descriptive terms, it would put all sellers in the marketplace at a significant disadvantage because they would not be able to communicate to potential customers the nature and characteristics of their business, product or service. A business owner that selects a descriptive trademark assumes not only the risk of being able to prove secondary meaning, but also that others in the marketplace will use the same or similar descriptive terms to describe their business, products or services.  It should be noted that surnames (i.e., last names) and self-laudatory terms, such as best, friendly, dependable, preferred, greatest, deluxe, supreme, etc, also fall into the descriptive category.

Generic Trademarks

Generic words, terms or phrases cannot be trademarks.  Because a generic term is not capable to distinguishing the source of a product and/or service, it cannot be registered as a trademark or service mark in any state trademark office or with the USPTO. Generic words, terms or phrases also can never achieve secondary meaning.  To properly designate as a generic trademark, the trademark must be the name of the same product or service being offered or sold in the marketplace.  For example, “sandal” is a generic name for warm weather footwear, “bicycle” is a generic name for a the two wheeled vehicle, “surf wax” is a generic name for the substance placed on a surfboard for grip.

Company Names

The following is a general company name checklist  to employ when selecting a trademark for your partnership, limited liability company, corporation, joint venture or non profit organization.  Company names are the most widely used type of trade name. company names can achieve great value and symbolize substantial good will. Courts have recognized the protectibility of this interest, and the need to protect the general public from confusion.

Generally, the Secretary of State in the state the company is registered is the government entity that approves the company name. Approval means the company name is distinguishable from the name of any other company that is authorized to do business in that state. This approval does not create any substantive rights in the company name. Only actual use of the name in commerce can establish protectible rights that can then be asserted against third parties and establishes priority rights. However, approval to use a company name in a state does not reveal any conflicting, similar, or identical business names in interstate commerce. A search from a state employee to find a conflicting company name within the state will not reveal conflicts with other companies or federal trademarks in that state or other states. Thus, it is not recommended to rely solely on a state approval to use a company name in that state as an assurance that there will either be no legal challenges to the use of the company name or that you will be immune from such a challenge.

Company names are not eligible for trademark registration; however, if the name is used as a trademark, company names are allowed registration under the same principles as other trademarks. In order for registration, it must be determined that the trademark is not solely being used as a company name. The following list provides some general guidelines that could increase the chances of a company name being registrable as a federal trademark with the USPTO:

  • Use the company name as a trademark by writing the name in a distinctive font;
  • Avoid using entity designation (e.g., corporation, LLC, LTD)  followed by a generic name of the good or service;
  • Avoid using the business address in connection with the company name. The address suggests more of a trade name rather than a trademark;
  • Avoid using other trademarks in connection with the company name trademark. This also suggests that the company name is not being used as a trademark;
  • Avoid using phrases such as “made by,” “operated by,” or other informational phrases with the company name; and
  • If the full company name is actually used as a trademark, avoid applying to register only part of the name. The USPTO typically only allows registration of full company names, not a portion of the name.

Slogans

Nothing contained within the Lanham Act prevents slogans from being registered for trademark protection as long as the slogan signifies the source of the goods or services and distinguishes them from the goods or services of others. The slogan must be used in the trademark, and displayed conspicuously and consistently, and must not simply be informative. If the slogan is merely descriptive of the goods or services, trademark protection may still be afforded, but only if a secondary meaning is established.

Trade Names

Trade names are names that identify a business instead of goods or services. Trade names are protectible under the same principles as trademarks; however, trade names alone are generally cannot achieve federal registration with the USPTO. Trade names gain protection typically from state laws of unfair competition, common law, statutory law, or under section 43(a) or 44 of the Lanham Act.

While not registrable solely as a trade name, trade names do benefit from trademark law. The use of a distinctive trade name is entitled to injunctive relief against the use of an identical or similar name or trademark if confusion between the two is likely to occur. Likewise, if a trade name is generic, descriptive, or has a surname character, the name is generally not protectible unless a secondary meaning is established. A federal trademark dilution action is also available if a trade name is likely to cause dilution.

To show use as a trade name, a business or organization must show that they have used a name or acronym in a manner that identifies the company by that name or acronym to the public.  A formal adoption of the name or acronym is not necessary.

Trade names may be registered with the USPTO when the trade name is also used as a trademark. The determination if the trade name also functions as a trademark is not easy. The distinction between a trade name used solely as a name and used as a trademark is made on the basis of the use of the term on the specimens offered during the trademark application process, mixed with the commercial impact of such use on the public in the marketplace. If the company name is used to crate an impression that is separate and apart from the company name, this is a proper use for a valid trademark.

Domain Names

A domain name identifies a particular place on the Internet where a “website” is located. A domain name has the ability to be federally registered as a trademark. In order for a domain name to become registrable, the domain name must be used to identify and distinguish the source of goods from the goods of another. If the domain name is used solely to indicate the Internet address and not to identify the source of goods, then the domain name does not function as a trademark and cannot be registered. Therefore, the key to protecting and trademarking a domain name is to use the domain name as a trademark. A clear example of a domain name that is registered as a trademark is Amazon.com.

Conduct a Trademark Search Before Adopting The Selected Trademark

Once you have created a list of potential trademarks, it is important to conduct a 50 state and federal trademark search to ensure the trademark you select is available for use.  If you discover that a third party has applied for or registered a similar or identical trademark in your particular marketplace, it will likely be worth your time and money to select a different trademark in order to avoid trademark registration issues or, worse, trademark infringement.  If you would like to find out whether your proposed trademark is available for use, please do not hesitate to reach out to our trademark attorneys.  We can assist!