Companies and individuals naturally gravitate to trademarks that describe their products and services. For example, a roofing company might choose the “Best Roofing Company,” or a coffee shop might select “Cup of Joe.” While there is some benefit in ensuring that your customers will know what you are selling, there are several problems with this strategy.
In trademark speak, there is a wide range of trademarks. On one end of the spectrum, you have generic marks, which are not protectable as trademarks at all. Think “soap” for soap. Because everyone uses these words to describe the products, regardless of the source, these marks are not available for trademark protection. You won’t be able to protect your brand of soap if it is called “Best Soap” because other parties can, and should, be allowed to use that phrase to advertise their own soap.
On the other end of the spectrum, there are highly protectable fanciful marks, such as “Kodak” and “XEROX.” Fanciful marks are made-up words with no ordinary meaning. Next are arbitrary marks. These marks are also highly protectable. The “Apple” mark is an example of an arbitrary trademark – it has an ordinary meaning (e.g., apple for apples) but is being used for something besides the ordinary meaning (e.g., computers and smartphones). In the middle of the spectrum, there are suggestive marks, such as “Coppertone” or “Greyhound.” These marks are suggestive because they suggest the underlying meaning – using “Coppertone” sunscreen will give your body a copper tone. Greyhound provides fast transportation, like a greyhound dog is fast.
And then we have descriptive marks, such as “WeightWatchers” and “Windows.” These marks are descriptive because they describe the underlying goods and services – e.g., “WeightWatchers” provides weight watching products and services, and “Windows” is an operating system utilizing windows on a computer. Unfortunately, while these trademarks are useful because consumers immediately understand what the company is selling, they also utilize common words and phrases for the products and services they describe. Because these common words cannot be monopolized by one company, descriptive trademarks are not protectable without a showing of secondary meaning. Typically, to show secondary meaning, a company must show exclusive use of the term or phrase for the goods and services listed for at least five years. And if other companies use similar terms or phrases to describe the same products, then it can be difficult to register your trademark or protect that brand from others using it.
Selecting a trademark for a new company, product, or service is extremely important. Selecting a weak mark will make it easier for consumers to understand what you are selling but will make it harder to keep others from using similar marks. Selecting a fanciful or arbitrary mark may cost more initially, because you will likely have to spend more money on marketing to ensure customers understand what you are selling. But your creativity will often be rewarded in the long run. It will be easier to avoid infringement and protect your trademark and brand if you are unique. Moreover, the more suggestive or fanciful your mark is, the easier it will be to register with the trademark office. So, be creative and unique in your branding efforts.
* This article first appeared in The Journal Record on August 5, 2023, and is reproduced with permission from the publisher.