First, let’s define the term trademark. Under U.S. trademark laws, a trademark is anything that can identify a source of a product or service. Almost anything can serve to identify a source such as words, logos, colors, sounds, restaurant designs, product packaging, and product designs, which is a non-exclusive list of potential types of trademarks.
A trademark comprised of one or more words is known as a wordmark. Examples of a wordmark include Apple, Microsoft and General Motors. Each of these exemplary wordmarks is also associated with a corresponding logo. The other types of trademarks are more nuanced. An example of a color trademark is Tiffany’s cyan color that adorns all of their boxes, bags, and catalogs. An example of a sound trademark is Microsoft’s operating system boot up sound. An example of a product packaging type trademark is the shape of Coca Cola’s bottle.
However, many startups and companies do not seek protection for those more nuanced types of trademarks unless there is a specific reason for doing so.
More often, startups and companies focus their efforts on wordmarks and logos. In many cases, wordmarks can be more important than logos, since trademark infringement typically occurs between confusingly similar wordmarks than logos. Moreover, consumers generally discuss products and services by referring to the wordmark and not the logo. With this in mind, the following discussion focuses on how to select a trademark in terms of a word mark.
Not all wordmarks are equally strong. Some trademarks afford less strength or breadth, whereas, other wordmarks are attributed with broad protection. The strength of the trademark refers to the wordmark’s ability to be enforced against others. The strength of the trademark is dependent upon the inherent quality of the mark in relation to the goods associated with the mark and the existence of other similar marks already in use in commerce.
The inherent quality of the mark relates to where it resides on the generic–fanciful categorical scale. In trademarks, all wordmarks are characterized as being generic (not protectable), descriptive, suggestive, arbitrary and fanciful. As indicated above, generic wordmarks cannot be registered and cannot be enforced against others even under common law. Descriptive wordmarks are marks that describe a quality or character of the goods being sold under the wordmark. Descriptive wordmarks can be registered on the principal register with the United States Patent and Trademark Office, so long as they are distinctive. However, since the law does not want to remove a competitor’s ability to use these descriptive terms in describing their own goods, the law affords less protection for these types of descriptive wordmarks.
Suggestive, arbitrary and fanciful marks are considered to be very strong marks. The law affords broad protection for these marks since they are not useful or as useful to competitors in marketing competing goods and services. Moreover, consumers will recognize suggestive, arbitrary and fanciful marks as inherently being used as a trademark (i.e., source identifier) and not merely to educate the consumer regarding the quality or characteristic of the goods being sold.
On the generic–fanciful categorical scale, some companies adopt marks that afford broad protection, whereas other companies adopt marks that afford less protection. Kodak is a fanciful mark in that it is a completely made up word, and Apple is an arbitrary mark that has no apparent link to computer and electronic devices. The law provides these companies with broad trademark protection.
Kodak and Apple may also be provided with extra protection as a famous mark. Typically, a trademark owner can assert a claim of trademark infringement against another if there is a likelihood of confusion wherein two marks are confusingly similar and the goods associated with each of the marks are traded within the same channels of commerce. For famous marks or marks that are household names, even if there is no likelihood of confusion, famous marks can sue another for claim of trademark infringement based on dilution where there is no confusion but merely a weakening of the strength of the famous trademark or unsavory association with the famous trademark.
Hence, when selecting a trademark, be aware of where the proposed trademark lies on the generic–fanciful categorical scale and also avoid any similarity with famous trademarks.
With online marketing being crucial for the success of most products, it is important to recognize the importance of the category of trademark and the trademark’s benefit for search engine optimization and also the availability of domain names. Search engines are increasingly becoming smarter in distinguishing between brand names and descriptive terms or phrases. As such, one should research whether the benefit of selecting descriptive or suggestive marks to one’s search engine optimization efforts would outweigh the detriment of weaker protection.
Additionally, if the domain name is not available but crucial for success of the trademark, then companies need to rethink or select a different trademark.
I invite you to contact me with your patent questions at (949) 716-8178. Please feel free to forward this article to your friends.