Not all words or names can be protected as trademarks. For example, no one business can claim exclusive rights in generic terms because every business owner in the same industry needs to be able to use them to identify their own goods or services. Thus, no one owns the words “computer,” “automobile,” or “candy” as a protectable, standalone trademark because these are simply generic words for a particular type of goods.
In fact, there is actually a scale for types of trademarks and the levels of protection they can obtain through registration with the U.S. Patent and Trademark Office (the “USPTO”) ranging from “generic” (Generic terms are not subject to trademark protection.) to “fanciful or coined” (Made up terms are afforded the greatest scope of protection.) The range of potential trademarks, from weak to strong, includes:
1. Generic terms (e.g., “cars,” “candy,” and “computers”) are not subject to trademark protection. A generic trademark cannot be protected as a trademark because it describes a category of product or service.
2. Descriptive terms (e.g., “Bed & Breakfast Registry,” “Oatnut,” and “UrbanHouzing”) are protectable as a trademark, but only after acquiring “secondary meaning” in the marketplace. A descriptive trademark merely describes some portion of the goods or services to be sold under the mark.
3. Suggestive terms (e.g, “Citibank” and “Greyhound”) are more protectable. A suggestive trademark is so named because it suggests a quality or characteristic of goods and services; such a trademark might also be called allusive.
4. Arbitrary terms (e.g., “Apple,” “Starbucks,” and “Dr Pepper”) are subject to a greater scope of protection than suggestive marks. An arbitrary trademark has a common meaning, but the meaning is unrelated to the goods or services offered for sale under the mark.
5. Fanciful or coined terms (e.g., “Xerox,” “Exxon,” and “Kleenex”) are given the greatest protection. A fanciful trademark is made-up, invented for the sole purpose of functioning as a trademark.
With this spectrum in mind, there are several simple rules to follow in selecting words for use in a new trademark.
- Do select words that are fanciful or simply made up.
- Don’t use words that are purely descriptive.
- Do select animal and plant names.
- Don’t use surnames unless already associated with goods.
- Do select marks that cannot be confused with other existing marks.
- Don’t select marks that use generic words.
- Do select marks that are memorable.
- Don’t use acronyms or numerals.
- Do use the trademark properly and consistently. And, once you have selected it, protect your valuable trademark by registering it, policing it, enforcing it, and, for goodness sake, using it properly and consistently. Careful selection of an appropriate trademark BEFORE it is used in commerce can save considerable time, effort, money and even frustration later on.