Selecting Good Trademarks

Mark A. Wright
Director and Chair, Intellectual Property Practice Group
January 1, 2000

The trademark you select identifies the source of your product or service and distinguishes it from the goods or services of other companies. A trademark should be memorable; should attract the eye, ear and mind of the potential purchaser; should elicit desirable consumer responses; and otherwise be distinctive. However, there is an inherent conflict between common marketing practices and trademark law. Marketing personnel generally prefer names for products that immediately convey what the product is, thereby making the sale of the product easier. Unfortunately, the more a mark describes the product or characteristics of the product, the less protection afforded the mark under trademark law.

When selecting a mark, attention should be given to the “spectrum of distinctiveness,” which ultimately determines whether a mark may be entitled to protection. Fanciful, arbitrary and suggestive words make strong trademark candidates, while descriptive marks that use words to simply describe the function, characteristics or quality of a product are the weakest trademarks. The following are some examples of marks that fall within the “spectrum of distinctiveness” or “spectrum of protectability.”

Fanciful Marks

KODAK is a fanciful trademark for photographic supplies. A fanciful mark is a word that is without dictionary meaning, which was created for the sole purpose of functioning as a trademark. Fanciful marks are entitled to immediate trademark protection and may be protected in both competitive and noncompetitive industries. Some marketers contract marks from parts of other words connoting positive emotion, such as ACURA® from accurate.

Arbitrary Marks

APPLE® is an arbitrary mark for computer equipment. An arbitrary trademark is a word that has a common meaning, but is used as a trademark for a product that has no relationship to the common meaning. Like fanciful marks, arbitrary marks are inherently distinctive and immediately entitled to protection as trademarks. A mark that is descriptive or generic in one industry can be arbitrary and entitled to protection in another industry, such as the word “computer” when used as a trademark for clothing.

Suggestive Marks

A suggestive mark is one that suggests or hints at, but does not describe, the qualities or characteristics of the product. Suggestive marks are also considered inherently distinctive and, therefore, entitled to trademark protection immediately upon use. WORDPERFECT® is a suggestive mark for word processing software.

Trademarks To Avoid

The weakest type of trademark is a descriptive word that simply describes the function, quality or characteristics of a product. NO SPOT for a car wash system would be a descriptive trademark. Protecting a descriptive mark requires persistent advertising and lengthy use. Descriptive marks are given very limited, if any, protection by the U.S. Trademark Office. Surnames and geographic names often present the same obstacles to protection and registration.

Whatever trademark you choose, it must not be the same or confusingly similar to any other trademark that is in use for similar products or services in the same geographic area. It is critical that a trademark attorney be engaged to “clear” (search) the mark or name to determine whether the mark is available and entitled to registration. Without a proper trademark search, you may encounter frustration and financial loss if you discover, after the adoption of the mark, that another party has superior rights to use the mark and is prepared to enforce those rights in court unless you change your name.