By: Seth TeBeest
If your business has a name, and/or names for its products or services, then you own trademarks. A good trademark will do two things. It will distinguish you from your competitors and it will communicate a message to the consumer about your brand. Trademarks come in five different flavors:
Some of these will achieve the two goals of a trademark better than others, therefore, choosing the right type of mark can have a substantial impact on your business.
Generic marks will never receive legal protection and should not be used alone when naming your business or its products/services. These are words that “refer . . . to the genus of which the particular product is a species.” Put more simply, generic terms merely tell the consumer what the product or service is. For example “DOUGHNUTS” in “DUNKIN’ DOUGHNUTS,” or “COMPUTERS” in “APPLE COMPUTERS.” Dunkin’ Doughnuts cannot keep its competitors from using the word “DOUGHNUT,” and neither can Apple sue Hewlett-Packard for calling what they make a “COMPUTER.” Notice that each company has included another word along with the generic term. This allows them other avenues for protection that will be discussed below.
Descriptive marks are those that describe a product or service. This goes beyond merely calling the product what it is, but giving the product or service some kind of attribute. These marks do a great job of communicating a message to consumers, in this case, what your product is, but they don’t really distinguish you in the field of competition. For that reason, descriptive marks will only receive legal protection if they have achieved “secondary meaning” which is lawyer talk for brand status. Essentially, this is when consumers no longer see the trademark as a term describing some random product, but as a brand that refers to a specific product, your product, not your competitor’s product. Secondary meaning takes time and effort to get. There is no magic formula that will cause it to come about. You just have to get your mark out there in front of consumers for while and wait for it to happen.
My favorite example of this type of mark is “IMDB,” The Internet Movie Database. This is a group of words that describes what the product is. That is, a database of movies found on the internet. However, if you have ever searched the internet for an actor, director, tv show, movie or anything showbiz related, IMDB was probably the first or second website to show up in your results. While IMDB may only be descriptive, people no longer view the mark and think of an internet movie database, but THE Internet Movie Database. The name has taken on two different meanings, one descriptive, the other referring to a source of origin. Thus, it has achieved secondary meaning and qualifies for legal protection.
Suggestive marks are similar to descriptive marks, but they take a little more imagination to make a connection between the word and the source of origin. Unlike descriptive marks, they do not require secondary meaning in order to qualify for legal protection. They get it automatically. Suggestive marks hit the sweet spot when it comes to distinguishing yourself and communicating a message.
Take for example, “NETFLIX”. This mark communicates what the service is, movies on the internet. But, they have shortened the word “internet” to “net,” and used the term “flix,” a version of the word “flick” which is slang for film or movie. It doesn’t come right out and say what the service is like IMDB. You have to think a little in order to get it. This makes the term very distinctive. It is unlikely that the word “Netflix” refers to any other product or service. Another example is “Dunkin’ Doughnuts” from above. While the company cannot claim the generic term “doughnut,” they have combined it with the word “dunkin'” which is a form of the word “dunking,” as in dunking your doughnut into your coffee. This mark accomplishes both goals, it distinguishes the company from its competitors and it tells consumers what the company sells, doughnuts and coffee.
Obviously, when choosing a name for your business or products/services, you want to create a suggestive mark, however, the line between descriptive marks and suggestive marks is very blurry. You may intend to create a suggestive mark and end up with a descriptive one instead. Again, there is no magic formula that you can follow to guarantee that your mark will be suggestive. Some strategies that you can try are to use slang terms in place of generic terms or use words that convey an attribute rather than naming it.
- “Roadrunner” instead of “fast,” or “quick”
- “Gold Medal” instead of “best” or “first”
- “Sunbeam” instead of “bright”
Fanciful and Arbitrary Marks
Even though they are technically different, fanciful and arbitrary marks are often described in tandem. This is because of all the various types of marks they share the most in common. Fanciful marks are made up words. Since they are very distinctive, they also receive legal protection automatically. “XEROX” did not exist in any language before it was invented by the founders of the famous copier business. “KODAK” is a made up word for cameras and film.
Arbitrary marks are real words, but they don’t make any sense in the context in which they are applied. They also receive automatic protection. “APPLE” has nothing to do with computers. “STARBUCK” is the name of Captain Ahab’s first mate in “Moby Dick” and has nothing to do with coffee. Fanciful and arbitrary marks do a fantastic job of distinguishing your business from the competition, but any message they convey to the consumer about the brand is not obvious on its face. You risk missing your target audience by choosing either of these types of mark. It takes even more time and effort (read money) to establish your identity among consumers than does achieving secondary meaning in the case of a descriptive mark, but if you can pull it off, you will have the strongest mark possible.
It is important to note that if a mark is already owned by someone in your same line of business, you won’t be able to use that mark. For that reason, it is a good idea to have more than one name picked out just in case you can’t use your favorite one. It would be a shame to invest a lot of time and money into choosing the perfect name for your product or business only to find out that you have to start all over again. Having a back-up or two will keep you running along without missing a stride.
Seth TeBeest is an Illinois licensed attorney. He holds a Juris Doctor from the Valparaiso University School of Law and will graduate with a Master’s Degree in Intellectual Property Management and Markets from the Chicago-Kent College of Law in May, 2014. You can contact him via e-mail at firstname.lastname@example.org.
This post is for informational purposes only. It is not intended as nor should it be interpreted as legal advice. No attorney-client relationship exists as a result of viewing these materials. Each person’s situation is different and the legal consequences likely depend on the particular facts and circumstances presented. You should speak with an attorney before making any decision that may have a legal effect.