It’s a common debate at many companies — what to name a new product or service (or the company itself).  Part of this decision is informed by competing goals; should the name allow consumers to immediately discern what the product/service is, or should it be a distinctive term that is likely to “stick” in the minds of consumers?  Deciding which approach to take should involve a discussion regarding trademark rights, as each has implications regarding the company’s ability to register the trademark and stop others from using identical or similar marks.

Depending on the relationship of the mark to the goods and/or services it is used with, a mark can be classified into one of the following general categories, with the first conferring the “weakest” trademark rights and the last generally conferring the “strongest.”

Generic terms do not confer enforceable rights and cannot be registered, as they merely tell the consumer what the goods/services are.  The rationale for denying these marks exclusionary rights is based on competition.  If a company is selling apple juice, it would be unfair to allow that company to register the mark APPLE JUICE and prevent its competitors from using the term in connection with their own juice products.

Merely Descriptive terms don’t tell consumers what the product/service is, but they (surprise!) describe a feature, quality or characteristic of the good/service.  Descriptive terms typically confer weak trademark rights, as they identify a feature of a product/service, not the source of it.  If a company starts selling NEW ENGLAND APPLE JUICE brand juice, the provider of the product is not being identified, but a characteristic of the product is.  Descriptive marks can confer exclusionary rights and be registered, if and only if it can be shown that consumers have come to recognize the term as describing the source (sometimes called “secondary meaning”), rather than a characteristic, of a product.

Suggestive marks imply something about a product or service, but do not immediately convey a characteristic of it.  We trademark lawyers like to say that suggestive marks require “mental gymnastics” to discern the meaning behind the mark (think of a brain in a leotard).  An example of a suggestive mark is AN APPLE A DAY, for juice.  Suggestive marks can be registered without showing secondary meaning, and typically provide “stronger” rights than descriptive marks.

Arbitrary or Fanciful marks are generally considered the “strongest” trademarks, because they have no relation to the relevant goods/services.  An arbitrary mark is formed when an actual word is used in connection with completely unrelated goods/services (such as APPLE for computers).  A fanciful mark goes one step further, in that it is a completely made-up word (such as GOOGLE for search engines).

Which of the foregoing categories a trademark falls into is frequently not “cut and dry.”  Much of a trademark attorney’s time is spent analyzing this question for clients as they evaluate potential marks or third-party infringement claims, as well as preparing and submitting arguments to the U.S. Trademark Office (or foreign trademark offices) that respond to a refusal on the grounds that a mark is generic or merely descriptive.  What is clear is that the closer your mark is to the “arbitrary or fanciful” range of the spectrum, the better off you will be.  This is because not only will the mark be “stronger” and therefore easier to register and enforce, but a fanciful mark with no relation to the relevant goods or services is also likely to be less similar to other marks that are used in your industry, saving you from being on the receiving end of an enforcement action.

When evaluating a potential trademark it is wise to consult with an experienced trademark attorney, to evaluate (1) whether it will be possible to register the proposed mark, and (2) the likelihood that it will run afoul of another party’s trademark.

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Danielson Legal is a boutique intellectual property and technology law firm in Cambridge, Massachusetts.

We represent international, national and regional companies, both large and small, in a variety of trademark, patent, copyright, licensing, and related areas of practice.

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