Choosing a Mark

At some point, you will have to choose a name for your product or service. This seems like a simple task. Just brainstorm four or five names and then select the one that sounds best. Or maybe you choose a name that describes your product or service. As we will see, these names may not qualify for trademark protection.

Trademarks are classified into four categories: generic, descriptive, suggestive, and arbitrary or fanciful. These categories are listed according to strength of trademark protection afforded. Generic trademarks receive no trademark protection. Arbitrary or fanciful marks receive the most protection. As a business owner, then, you want to choose an arbitrary or fanciful mark.

An arbitrary mark is simply a made-up word such as Viagra or Cialis. These words did not exist until clever pharmaceutical companies adopted these words as trademarks for their products. Arbitrary trademarks receive the most protection under federal trademark law.

Fanciful marks are dictionary words that are used in a different context from its ordinary meaning. A famous example is the “Apple” trademark. Apple is a dictionary word for a fruit that grows on a tree. However, Apple, Inc. uses its Apple trademark in connection with computer hardware. Fanciful marks also receive the most protection under federal trademark law.

Suggestive marks suggest to the consumer a characteristic or quality of the product or service offered by your company. An example might be “Microsoft”, which suggests to the consumer that the products offered by Microsoft have something to do with microprocessors and software.

Descriptive marks describe a characteristic or quality of the product or service offered by your company. Descriptive marks receive no trademark protection. Federal law generally prohibits the registration of descriptive marks. An example of a descriptive mark might be “Bob’s Car Wash” for a company that provides a service of washing cars. The example mark exactly describes the service offered. When you choose a mark for your good or service, try your best not to choose a mark that describes the good or product. Otherwise, you cannot register the trademark. You should also know that adding a prefix such as “e-” or “i-” does not necessarily transform your product or service from descriptive to suggestive. Alternative spellings of a mark will not save you either. The PTO will not register “Bobz Carz Wash”.

Generic marks are marks that are so identified with a good or service as to be unavailable for trademark protection. The rationale is that no one entity should be able to exclude others from using the term. An example might be “e-mail” for use in connection with “messages delivered over a global computer network”.

While some marketing departments and business owners understand these classifications, I consistently see marks from large and small businesses alike that either describe the goods or services offered or are generic. Before you spend thousands of dollars on your marketing campaign for your new good or service, you should check with a trademark attorney to make sure the mark is eligible for registration.