Choosing a Strong Trademark

A major part of TrademarkMobile’s Trademark Services is assisting clients in choosing strong, non-descriptive (inherently distinctive) trademarks for their products and services.

All trademarks are placed on a spectrum from strongest to weakest:

• Coined or Fanciful Marks – Words invented for the sole purpose of functioning as Trademarks.  These are extremely strong and immediately protectable as trademarks.  Examples include KODAK, XEROX, POLAROID and EXXON.
• Arbitrary Marks – Common words applied in an unfamiliar and non-descriptive way. Arbitrary marks may be generic for certain goods, but when applied to different goods morph into strong and inherently distinctive marks.  For example, APPLE for computers, DOVE for soap and ALASKA for bananas.
• Suggestive Marks – These marks requires imagination, thought and perception to reach a conclusion as to the exact nature of the goods.  For example, VIVIDVIEW for LCD screens, NUTRIMIX for trail mix food products and TRUE ATHLETE for vitamins.  Sometimes, adding a hyphen or compounding the words may make the mark unitary and hence, non-descriptive.

The USPTO and courts hold that Coined, Fanciful, Arbitrary and Suggestive Marks are Inherently Distinctive – they immediate function as trademarks without proof of secondary meaning.

• Descriptive Marks – Immediately describes a function, feature, ingredient, purpose, characteristic, use, subject matter or user of the goods and/or services or are primarily merely a surname or geographic designation (American) or laudatory (“Best Ice Cream”).  The USPTO holds that the mark need only describe ONE aspect to be held descriptive. The USPTO considers descriptive marks non-distinctive and not immediately registrable as trademarks unless the mark has been used for more than five (5) years.  We call this “acquired distinctiveness” or “secondary meaning” – the trademark’s primary meaning is descriptive, but it’s secondary meaning is a trademark.  Examples – FARM & FIELD for a child’s farming toy or JOHNSON for supermarkets may acquire secondary meaning after substantially exclusive and continuous use for more than five (5) years.
• Generic – these words are the common commercial name of the product and can never function as trademarks, even if you add a .com.

Here Are Some Helpful Hints on Choosing Strong Trademarks:

• Avoid adopting descriptive marks. A third party may have been using the descriptive mark for more than five (5) years and have acquired trademark rights in the term.  This is called “acquired distinctiveness” or “secondary meaning.”  In other words, just because a competitor uses it does not mean you can!
• Don’t Choose the Obvious or Commonly Used Terms for the Goods or Service – Use imagination and creativity.  If the trademark appears obvious, then most likely, someone else may have thought it before.
• Don’t Choose Marks Similar To Those Used By Competitors – Especially after seeing them at a recent Tradeshow.
• Avoid Geographic, Surnames, Scandalous, Misdescriptive and Deceptive marks.
• Remember, you can always add a descriptive term to the mark to inform purchaser what is the product – For example, DIGIVIEW EBOOK READER.
• Single word marks are generally more difficult to clear for multiple goods and/or services. Try combining terms together in unique ways. We call this “compounding” or “telescoping” a mark.
• Finally, adding your house mark, taking a prior mark and making it plural or singular, adding punctuation marks or changing the spelling slightly generally doesn’t avoid confusion.  As long as the mark creates a “similar overall commercial impression” to the prior mark, the mark may not be available for adoption, use and registration.