Back to Basics: Trademarks Part 1
In the most general sense, getting a trademark protects your brand. A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of another. By registering your trademark, you will be entitled to a presumption of ownership of the brand on a national level and a presumed right to use the brand nationwide. It prevents someone from registering a confusingly similar mark after you and allows you to sue in federal court if someone infringes on the brand you have worked hard to build. Once registered, you can also present yourself as an established and serious business because you can start using the ® symbol after your name, logo or slogan.
Making your mark a good one
The United State Patent and Trademark Office will not approve every name for a trademark. Under trademark law, names can be described as “generic,” “descriptive,” “suggestive,” “arbitrary,” or “fanciful.” You are more likely to receive a registration and be protected as you move from left to right or from generic to fanciful.
Generic names are almost never given protection. For example, you could not trademark the name “The Screwdriver Company” if you made screwdrivers. Almost as problematic as generic names are merely descriptive names. “The Metal Screwdriver Company” is also not likely to pass muster because it merely describes your screwdriver as being made of metal.
Descriptive marks are only entitled to trademark protection if they have gained secondary meaning. That is a legal term of art that means the name has become so famous that despite the generic nature, the public associates the product with a specific company. Examples include International Business Machines or IBM. Obviously, if you are just starting out, you shouldn’t rely upon a secondary meaning to get your generic name through. While a descriptive mark may obtain secondary meaning, generic names cannot and therefore they should always be avoided.
Your chances of getting approved improve dramatically as you move toward a suggestive mark. These hint at the quality or another aspect of the company such as “Herculean Screwdriver Company.” It is better than “Strong Screwdriver,” but conveys the same meaning. These you can usually register, but you run the risk that the USPTO says what you thought was suggestive was actually descriptive. Some popular examples include Microsoft which makes software for microcomputers or Citibank for financial services. Brand owners often like these names because it gives the consumer a good idea of what the company does without having to educate them or spending a lot on advertising to get them used to the name for the particular product or service.
Next on the list are arbitrary marks. These are existing words used in a way unrelated to their normal everyday meanings. Hence, Chocolate Screwdrivers may work. The textbook example of the arbitrary mark is Apple Computers – not to be confused with Apple Records.
Finally, fanciful marks are the easiest to get approved. A fanciful mark is a made up word or a very rarely used word that has nothing to do with describing the products. “Glotz” for a screwdriver company may work. You are likely familiar with Yahoo!, Google, Exxon and Spotify which would all be considered fanciful marks.
In addition to being rejected because the name is generic or descriptive, your name may be rejected for a number of other reasons including:
- it is too similar to another name already registered.
- it is a surname.
- it is geographically descriptive of where you are doing business.
- it is disparaging
- it is a foreign term that translates to a generic or descriptive English term.
- it uses an individual’s name or likeness, or is the title of a single book or movie.