Updated: Jan 20, 2022
Naming a business is like naming a kid - you want to do it right the first time.
So you’ve heard all this talk about trademark law and how important it is to protect your brand. You’ve read the statistics and you know that having a strong brand can dramatically increase revenue.
But contrary to popular belief, not all names legally qualify as trademarks. In fact, certain names can make registering a trademark relatively easy, while other names can make it difficult or even impossible.
Bottom line: picking the right name upfront can make life a whole lot easier.
This Thing Has Levels
The thing to remember about trademarks is that their sole purpose (from the government's perspective) is to indicate the source of goods and services. Some name choices are more conducive to this than others, which is why the trademark world has levels.
There are four levels of trademarks. In decreasing order of strength, they are: (1) arbitrary or fanciful, (2) suggestive, (3) descriptive, and (4) generic.
Level 1: Arbitrary or Fanciful
The most powerful trademark level is arbitrary or fanciful. This is because these marks couldn’t be confused as being anything other than a source indicator. “Fanciful” covers made-up terms. Think of Pepsi, Kodak and Exxon - these are made-up terms that were invented solely to be used as brand names. “Arbitrary” includes terms that already exist, but have nothing to do with the brand’s goods or services. Think of Apple for computers and Shell for gas stations. These marks are “arbitrary” because apples have nothing to do with computers and shells have nothing to do with gasoline.
Fanciful and arbitrary marks are considered the most unique, which is why this is the strongest trademark level.
Level 2: Suggestive
A suggestive mark is one that requires imagination or a logical leap to connect it to the goods or services. In other words, it suggests what the brand does without coming right out and saying it. Netflix is a great example. “Net” suggests something having to do with the internet, and “flix” suggests something having to do with movies. But you have to use your imagination to jump from the term “Netflix” to “this brand offers movies and TV shows through an online streaming platform”. While not considered as unique as arbitrary and fanciful marks, suggestive marks still make great choices and are the second strongest level.
Level 3: Descriptive
Next on the list are descriptive trademarks, which are marks that literally describe some aspect of the goods or services being offered. Think of American Airlines (which is literally an airline in America) and Sports Illustrated (which literally contains photographs of sports).
At this point, it's helpful to remember that there are two different trademark registers - the Principal Register and the Supplemental Register. The differences between the two are beyond the scope of this blog post, but as its name suggests, the Principal Register is better. This is why descriptive trademarks can be problematic - the Trademark Office will often refuse to put descriptive trademarks on the Principal Register, which means they are relegated to the Supplemental Register instead. Given, this is not necessarily the end of the world, (it is still a registration and you still get to use the ®), but it is something to think hard about before picking a descriptive trademark.
Sometimes, a trademark owner can prove that even though their mark is descriptive, it has acquired “secondary meaning”. This basically means that there is substantial name recognition among the consumer population. If a trademark owner can prove this, then even a descriptive mark can make it onto the Principal Register.
Level 4: Generic
Last and least are generic terms, which are not eligible for registration at all. A generic term is a word or phrase that is already the common name for the goods or services. For example, an apple seller would not be allowed to register the word “Apple” as a trademark. In contrast, it’s okay to register “Apple” as a trademark for a computer company, because the name has nothing to do with the goods and services being offered.
Unfortunately, sometimes brands are victims of their own success. When a brand name becomes the generic name for a good or service, the brand can fall victim to “genericide” and lose its trademark. This has happened to former brands such as Elevator, Trampoline, and Kerosene.
Hate to see it. But it happens!
Asking for a Friend . . . What if it’s Too Late?
So what if you already picked a descriptive or a generic name for your brand? Depending on the situation, all may not be lost. The right attorney can help you figure out whether your brand has acquired secondary meaning in the marketplace, or whether opting for the supplemental register can still bring the benefits you’re looking for. If the business hasn’t started yet, diagnosing the situation early can still leave time for a re-brand before too much money is tied up in the name.
After all this talk about names, it seems only appropriate to leave you with this:
“What's in a name? That which we call a rose. By any other name would smell as sweet.”
- William Shakespeare, Romeo and Juliet
Thanks for reading the Bevel Law Blog! While this information is hopefully helpful to you, nothing in this blog is intended to be legal advice. Always consult a lawyer before making any legal decisions based on topics in this blog.
Ready to trademark your brand and start legally protecting your name recognition? Book a call today at bevellaw.com/call.