The other day, a friend was talking about how he changed the name of his startup, and how excited he was that the new name fit his company better. To my ears, the new name that generated so much excitement seemed dangerously similar to one of the most well-known brands in the world. How similar is too similar? How do you know if your new marketing department’s rebranding will land you in a trademark quagmire? The short answer is you probably don’t know, unless you hire a trademark lawyer. But knowing the basic trademark concepts will help you be more informed and more efficient while working with your lawyer.
Registering a name as a trademark comes with a number of pros, including the ability to bring action against infringers, and constructive notice to others of your ownership of the mark (which will make action against infringers much easier). In addition, registering your trademark allows you to use the ® symbol.
If your mark is not registered, only the ™ symbol can be used. This ™ symbol alerts the public that, although you haven’t registered your trademark, you are still using the name as your trademark. Using a name as a trademark (e.g. your business’s name or brand name) without registration may provide you with common law trademark rights. This post will not cover common law rights, but will instead focus on the federal registration of trademarks.
In order to be registered, a trademark:
- must be Distinctive
- must be in Use
- must not be Confusingly Similar to other marks
This post considers the issue of Distinctiveness. Distinctiveness considers the relative strength or weakness of a trademark. The second post in this series will address the issues of Use and also the Confusingly Similar aspect of registrability. This two-part trademark post examines registering the wording alone of a company name, and does not consider the issues of logos (although logos may also be separately registered trademarks, e.g. Nike and the swoosh).
When your lawyer considers whether your proposed trademark is Distinctive, she will consider a sliding scale of categories and decide into which category your trademark falls. Your proposed trademark can be considered a Fanciful term, Arbitrary term, Suggestive term, Descriptive term, or Generic term. Just like your dinner could fall into any category on the sliding scale of hot, warm, lukewarm, cold, or freezing, so can your trademark fall into any category on the sliding scale from Fanciful to Generic.
The further to the left your trademark is, the stronger it is. If your trademark is on a Distinctive part of the chart, then it can be registrable. The further to the right your trademark is, the weaker it is. If your trademark falls all the way to the right, it means that it is no longer Distinctive, and therefore, not registrable.
The scale starts on the left side with Fanciful terms. Fanciful terms are usually words that were made up with the purpose of being a company name. The word had no meaning until the company created the name (for example, Zappos). Fanciful marks can be registered trademarks.
An Arbitrary term is a word that has absolutely nothing to do with the product being sold. For example, if you sold calculators, but called them Rhinoceroses, your mark, “Rhinoceroses” would be Arbitrary. In the real world, Apple is the example that is always held up as arbitrary, because apples have nothing to do with computers. Arbitrary terms can be registered trademarks.
The scale next goes to a Suggestive mark. A Suggestive term suggests something about the product, but does not describe the product (which would be a descriptive mark). Some imagination on the part of the customer is required to guess the product. An example of a Suggestive trademark is Greyhound (a bus company). Suggestive terms can be registrable trademarks.
You know a trademark is Descriptive because a Descriptive trademark describes the qualities or characteristics of a good or service. A Descriptive trademark is only a registrable trademark under certain circumstances. A Descriptive trademark requires Secondary Meaning (Secondary Meaning is also called Acquired Distinctiveness) in order to be a registrable trademark. Secondary Meaning exists if the public identifies this trademark with a single company or service. This usually only happens if the company is not brand new and if people have been buying the company’s products and seeing their advertisements for a while. Whether or not a Descriptive trademark has acquired Secondary Meaning usually takes additional judgment and case law research on the part of the lawyer.
A notable example of a Descriptive trademark is a company called Waltham Watch. This company was a real company that made watches in a town called Waltham. This trademark is Descriptive. To register their mark, the company had to prove that they had Acquired Distinctiveness. They had a large customer base that associated them with their quality watches and they had been around for a long time, and therefore, they had Acquired Distinctiveness and could register their mark.
A Generic trademark is never a registrable trademark. Even proof of secondary meaning (which works to register merely Descriptive marks) cannot transform a Generic term into a subject for trademark. No matter how much money and effort the user of a generic term poured in, or what success it achieved in securing public identification, a company still cannot deprive competing manufacturers the right to call the article by its name. Many drug companies will choose both a Generic name and a Fanciful name for their drugs (e.g. Viagra is the registered trademark for the drug sildenafil citrate).
Additional Problems in Classifying a Trademark as Distinctive or Not
The lines between the categories of a Fanciful term, Arbitrary term, Suggestive term, Descriptive term, or Generic term are not always clear.
A term may be in one category for one particular product (“Ivory” is Generic when used to describe an elephant tusk product) but the same term might be in another category for another product (“Ivory” is NOT a Generic term when used to describe soap).
A term may also shift from one category to another in light of differences in usage throughout time. For example, “Escalator” was originally Fanciful or Suggestive and is now Generic. A term may also have one meaning to one group of users and a different meaning to another group of users.
If it is determined that your trademark is Distinctive, then your trademark has met the first step for being a registrable mark. In order to ensure that it is registrable, your trademark must meet two other criteria: it must be in Use and it must avoid being Confusingly Similar. These two other criteria will be explored in our next trademark post, Trademarks Part 2: "Use" and "Confusingly Similar."
Did you enjoy this post? Read our follow-up post "Trademarks Part 2: 'Use' and 'Confusingly Similar'".