The greatest challenge that faces our clients with trademarks is coming up with a good name. Once a client comes up with a good name, our firm is well-equipped to file the trademark, assuming there are no conflicts. The exact reasons why you should come up with a good trademark are numerous, yet for the purposes of this blog, just accept that you should and we will get into the exact reasons in another blog post.
Whether a trademark is good depends on where it falls within the below spectrum. The categories within the list are ranked in hierarchy with “fanciful/coined” being the best and “generic” the worst:
Here is a brief description of what each of these names or categories means and examples of each:
1. Fanciful/ Coined
A fanciful trademark is made up of a word or words that you will not find in a dictionary; stated differently, the words are made up solely to serve as trademark. A good test to determine whether your word is fanciful is to look it up in a dictionary. If it does not exist, then there is a strong chance your word is new and thus a coined term. However, an important caveat is that words created by splicing together two or more words are sometimes not fanciful. For instance, if you come up with the brilliant idea of making a burrito with a waffle and call it “waffito,” that, unfortunately, is not fanciful.
Examples of coined terms that serve as trademarks are: Blistex, Kodak, Kleenex, Exxon, Tylenol, Actifed, and Reebok.
Arbitrary marks are marks that are comprised of common words in an unexpected or random way such that their normal meaning has nothing to do with the nature of the product/service they identify. That is, arbitrary trademarks are composed of words in common usage, with dictionary meanings, but those word or words do not in any respect describe the goods or services to which they are attached.
Examples include: Penguin books, Arrow shirts, Sun computer, Camel cigarettes, and Apple computers.
A suggestive trademark uses ordinary words in a clever manner to create a desirable idea or feeling about a product or service, but avoids literally describing any aspect of the product or service. A suggestive mark may sound like a descriptive mark (defined below), and the two categories are sometimes difficult to distinguish; for now though, just keep in mind that suggestive marks have a descriptive aspect, yet differ from descriptive marks because they suggest, rather than merely describe the qualities/characteristics of the goods/services to which they attach. That is, a suggestive mark conveys, indirectly, an impression of the goods/services to which it is attached, rather than outright describe it, and therefore requires the consumer to use his imagination/perception to determine the nature of the goods.
Examples include: Jaguar cars, Dove soap, Greyhound buses, Sunkist beverages, Citibank the bank, Coppertone lotion and Playboy the magazine.
A descriptive trademark is one that outright and specifically describes a quality, function, characteristic, or ingredient of a product/service. Therefore, in contrast to suggestive marks defined above, no imagination is required to understand the characteristics of the product/services that are being conveyed. Stated again but in different terms – a suggestive mark requires some additional thought, perception or imagination to make that jump in one’s mind to reach a conclusion as to the nature of the goods, whereas a descriptive mark takes that step for you.
Examples include: Best Buy for retail store services in the field of electronics and appliances, Auction Web for auction services online, Lite for portable computers describing the computer’s weight; and Quick Lube for fast oil change service, and Lektronic for electronics.
A generic trademark is one that is commonly used as the name or description of a kind of good. Also, a generic trademark may be synonymous with the good/service itself (e.g., “pear” is generic for pears), or may describe a broader category to which the particular good or service belongs (e.g., “fruit” is also generic for pears). It is sometimes said that a generic term describes the category within which a particular merchant’s product/service fits. Another way of stating this is to say – a term may be generic if it names or restates a noticeable attribute of the category in which the product/service fits.
Examples include: “Convenient Store” for a retail store, “Light Beer” for low-calorie beer, “Fish House” for a restaurant that serves fish, “Marijuana shop” for a store that sells marijuana.
Post Written by Joel Stauffer, Associate Attorney