Choosing a Good Name to Trademark

Time for fun with the fundamentals. In this article, I tackle the dilemma of choosing a name to trademark, which is a bit counterintuitive. Rule of thumb: the less your mark has to do with your business, the better because trademark law aims to prevent owners from having a monopoly over a class of goods or services since with proper maintenance and use one can have a trademark forever. Picking a unique name can help you overcome that and other hurdles (Olympics shoutout!)

The United States Patent and Trademark Office ("USPTO") and courts use a sliding scale-- from weak to strong-- to determine whether your name is protectable at all and if so, how strong it is compared to other marks (strong meaning how much you can you keep others from using the same or similar mark). The scale looks like this, from weakest to strongest:

generic---->descriptive---->suggestive---->arbitrary/fanciful

Generic marks are "ordinarily ineligible for protection as trademarks at all." United States Pat. & Trademark Off. v. Booking.com B. V., 591 U.S. 549, 554, 140 S. Ct. 2298, 2303, 207 L. Ed. 2d 738 (2020). A generic mark can either start that way (Frozen Treats for popsicles) or can become generic (a process dramatically called "genericide") when "a majority of the relevant public" comes to identify the mark as the good or service itself. Examples are aspirin, escalator and murphy bed. Horizon Mills Corp. v. QVC, Inc., 161 F. Supp. 2d 208, 213–14 (S.D.N.Y. 2001). This can happen when trademark owners fail to properly police their mark's use in the public or when they use their mark incorrectly (e.g. "google it" or "make a Xerox", though those companies have not yet lost their marks to genericide, mostly due to them investing tons of money into policing that type of usage).

Descriptive marks are not protectable UNLESS they acquire distinctiveness through evidence of secondary meaning. Bristol–Myers Squibb Co. v. McNeil–P.P.C., Inc., 973 F.2d 1033, 1039 (2d Cir.1992)(citing to Jewish Sephardic Yellow Pages, Ltd. v. DAG Media, Inc., 478 F. Supp. 2d 340, 343 (E.D.N.Y. 2007). I know, what does that mean??? Simply put, a mark that primarily describes your goods or services is not protectable. However, if you can prove through evidence (often in the form of consumer surveys) that the relevant public identifies your mark as your brand signifier and not the goods/services themselves, you may be granted rights in that mark, but such rights are very limited. Examples: American Airlines, Payless shoes.

Suggestive marks are difficult to define. The best the courts have come up with is that there must be some imaginative leap for the consumer to take to understand what it is you're selling with the mark. Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 11 (2d Cir. 1976). These marks are afforded a greater level of benefits and protections, but you may still need to spend significant money enforcing it against competitors, many of whom may not even realize they're infringing. Examples: Jaguar, Coppertone.

Arbitrary marks are MUCH MUCH better. They "employ common words in an uncommon way" and are entitled to the highest level of protection. Jewish Sephardic Yellow Pages, Ltd. 478 F. Supp. 2d at 358. Examples are Ivory Soap, Apple for computers, Amazon for e-tail.

Fanciful marks are as strong as arbitrary marks and are the most distinctive. They are made up by the trademark owner and "coined specifically to serve as a trademark". Id. This is ideal because it is highly unlikely anyone else already has the mark and if a competitor uses it after you register, equally unlikey they did so innocently, giving you the benefit of the doubt in any infringement lawsuit. Examples Kodak, Yahoo!, Zillow.3

TAKEAWAY: Aim for arbitrary or fanciful marks when creating your brand. While they may cost a little upfront in advertising costs to educate consumers on what you're selling, the benefits they bestow in trademark rights and IP value (a strong mark is worth way more to an investor or buyer) and savings they provide in policing and litigation costs will be well worth it in the long run.

For more information, see https://www.uspto.gov/trademarks/basics/strong-trademarks.

The above is for educational purposes only and is not legal advice. In some jurisdictions, it can be deemed attorney advertising. All rights reserved, Stephen Reich copyright 2024.