How to Choose a Strong Trademark

Source: Flickr

Choosing a name for your business is one of the most important aspects of your business. This article will be a brief look at the legally protectable aspects of your brand name, rather than a marketing article discussing the types of names that consumers connect with. In the US, there are five categories of marks, in decreasing order of strength: Fanciful, Arbitrary, Suggestive, Descriptive, and Generic. The strength of a trademark is how enforceable it is. As a rule, the less connection a mark has to the product or service, the stronger it is. Unfortunately, the names that are often seen as more “marketable” are the names that are less protectable.

A fanciful mark is completely made up — “Kodak” and “Exxon” are two of the most famous. Legally, fanciful marks are the strongest trademarks. From a business perspective, the less a name means before it is a trademark, the stronger the association will be with your company, product, or service. Further, competitors trying to create trademarks similar to your name are easier to expose and easier to prevent than other marks.

Arbitrary marks are words that may already exist, but have no connection to the goods or services being sold — “Lotus” and “Sun” for computers are famous examples, along with “Yahoo!” and “Pandora” for computer software. Even though these words had well-known meanings before being used as trademarks, there is no connection between those words and the products and services. Side note: even though arbitrary marks are strong, they are not immune to litigation.

Suggestive marks are marks that suggest a quality of a trademark. What sets suggestive marks apart from descriptive marks (discussed below) is that they require a mental leap between the description of the goods and the mark itself. “Habitat” for air purifiers, “Greyhound” for bus transportation services, and “Coppertone” for suntan lotion are some examples of suggestive trademarks. Suggestive marks are often the sweet spot between decent legal protection and ease of marketing. Absent a larger marketing campaign, it is sometimes difficult for arbitrary or fanciful marks to gain a foothold in the market, but if they do, they enjoy better legal protection.

Descriptive marks are the lowest type of trademarks qualify for some sort of legal protection. Descriptive marks generally describe the product or service the mark is used for without a consumer needing imagination or thought. However, descriptive marks do not automatically grant trademark protection. For Descriptive marks to grant any sort of legal rights, they must gain “secondary meaning,” also called “acquired distinctiveness.” To show secondary meaning, the owner must show that consumers have come to identify that mark a particular owner. Generally this needs to be proved with evidence like advertising or sales volumes, or with consumer surveys. Some examples of descriptive marks which have acquired enough secondary meaning to be registered include “Sharp” for televisions, and “Holiday Inn” for hotel services.

Generic marks are at the bottom of the food chain, as they generally describe exactly what a product is. “Apple” is a strong trademark for computers, but would be generic for actual apples. Marks which are misspelled do not bring you out of the Generic black hole of legal protection: “Appl” or “Appel” for actual apples would still be Generic. Generic marks can never qualify for trademark protection, unlike Descriptive marks, even if acquired distinctiveness is found.