Earlier we gave an overview of trademarks, which are designed to protect brands from having their identities ripped off. Verbal marks — as opposed to images or logos — are words and phrases used to represent your business. The word or words you choose can determine the success of your trademark registration or and any legal action you take to enforce your mark.
When you apply for a verbal trademark, an examiner at the Patent and Trademark Office (PTO) assesses whether your mark is “inherently distinctive of source.”1 The idea is to prevent customer confusion – the risk of someone buying a similarly-named product thinking it was yours.
To get approved, your mark doesn’t need to identify the factory where the product was made, or even the company behind it. For example, the soda brand Fanta is “sourced” by the Coca-Cola company. However, the trademark “Fanta” doesn’t need to indicate this. It suffices that whenever you see “Fanta” on a soda bottle, you know it’s coming from the same company that makes all the other “Fanta” bottles you see around. “Fanta” is a distinctive enough word that there would be no legitimate reason for another company to use it unless that company was trying to piggyback off of Fanta’s name recognition.
There’s a sliding scale when it comes to assessing distinctiveness. From least distinctive to most, the categories are: generic, descriptive, suggestive, and arbitrary or fanciful.2
Generic verbal marks, which identify the category to which a product belongs, are barred from registration. For example, if Company X makes a printer and names it “Printer,” that would obviously be a generic name and would not qualify for trademark protection. You can still lawfully give your product a generic name, but just know that it cannot be trademarked and protected from use by competitors.
On the other end of the spectrum are fanciful or arbitrary marks, which will be easily registered and protected. These are names that have no connection with the product being sold. For example, “Apple” for the computer product is arguably an arbitrary mark. If another company in the computer industry starts using the name “Apple,” there’s a high likelihood that they’re attempting tap into the goodwill associated with the Cupertino-based company’s brand, because the word “Apple” has no independent connection to computers apart from that company.
Descriptive and suggestive marks are the grey area of trademark protection for verbal marks. In general, if your mark requires “imagination, thought and perception to reach a conclusion as to the nature of goods,” it is suggestive and qualifies for federal trademark protection.3 “Twitter” is a good example because it connotes the twittering of birds, requiring an imaginative leap to associate it with a social platform.4
On the other hand, if your mark simply describes your product, it cannot be registered. Intentional misspellings of words don’t escape the standard. For example, “Quik-Print” Copy Shops was found to be merely descriptive of photocopy services.5
The only way for your descriptive mark to get protection is if it has acquired “secondary meaning.” This means that your mark has become so popular that consumers associate the description with a single source. For example, “American Airlines” might have seemed merely descriptive at the time of founding, but now it’s clearly identified with one particular company.
Things can get complicated if someone else is already using the mark you want. In that case, the first to use the mark will likely have legal priority to it.6 A recent conflict over the word “How” between Chobani and a well-known author and management consultant highlights how complex trademark issues can be.
Summing up,7 to ensure a smooth trademark registration process or to better prepare against any infringement litigation connected to the name of your business:
- Choose a mark that is fanciful, arbitrary, or suggestive.
- Research competitors offering the same goods or services, nation-wide, who are already using your mark or a version of your mark. You should Google search and use the Trademark Electronic Search System (TESS), a database of all currently registered trademarks in the United States.
- When in doubt, consult an attorney.
- This requirement comes from the definition of a trademark in Lanham Act § 45, 15 U.S.C. § 1127, which governs U.S. federal trademark law. The section reads: “The term ‘trademark’ includes any word, name, symbol, or device…used by a person…to identify and distinguish his or her goods…from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.” ↩
- This is widely called the Abercrombie Spectrum, as they were first articulated in Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976). ↩
- Stix Products, Inc. v. United Merchants & Manufacturers Inc., 295 F.Supp. 479, 488 (S.D.N.Y. 1968). ↩
- A useful case for understanding this concept is Surfvivor Media, Inc. v. Survivor Productions, 406 F.3d 625 (9th Cir. 2005). There, the court held that the mark “Surfvivor” for beach-themed products was suggestive, rather than fanciful, finding that “fanciful marks have no commonly known connotation to the product at hand. By contrast, the term “Surfvivor” is highly evocative of the company’s beach-related products.” Id. at 632. ↩
- See In re Quik-Print Copy Shops, Inc., 616 F.2d 523 (C.C.P.A. 1980) (finding “Quik-Print” merely descriptive of photocopy services). ↩
- A good overview of the laws surrounding priority of use can be found here: http://www.fr.com/prior-user-vs-federal-registrant–whose-mark-is-it-anyway1/ ↩
- For an excellent, in-depth and free resource on this topic and others in trademark law, see Barton Beebe, Trademark Law: An Open-Source Casebook, version 1.0. ↩