Intending to name your business and obtain a federal trademark or service mark registration for the name? Just choose a name or design that reflects your passion, search the USPTO database to see that it’s free and (application in hand) you’re on the path to registration, right?
Not so fast. How easy it will be to register your mark depends on the name or design you have chosen and where it fits in the continuum below.
[Note: This post was written while I was a practicing attorney running a diverse solo law practice, and it is one of a small number of “legacy posts” that I have retained on the site. When published, this was one of my most popular posts. Since April 2015, I have been working as an executive coach and writer, and I am not currently available for legal engagements.]
Fanciful/inherently distinctive marks. Fanciful marks are the best from a purely trademark (or service mark) perspective. These are made up words or inherently distinctive marks and are what is called prima facie registrable. This means the mark could be opposed by another party with superior rights but should not, if truly an invented name or mark, be initially rejected by the USPTO.
Arbitrary marks. An arbitrary mark is a common word that is used in a new context, unrelated to the dictionary definition of the mark. Use of the word “Apple” for computers is a commonly cited example. There was no relation between the word for the fruit and the word for the computer before these were linked in a mark. Arbitrary marks are also generally eligible for registration.
Suggestive marks. Suggestive marks are often good choices, since they often make the most memorable names for businesses. However, although they are generally presumed to be entitled to trademark protection, they are less strong from a trademark perspective than fanciful or arbitrary marks. A suggestive mark tends to indicate the nature, quality or characteristic of a good or service but does not actually describe the characteristic. The consumer must make a “mental leap” to connect the mark with the good or service. The risk with suggestive marks, in some cases, is that what you as the business owner believe is suggestive, the USPTO examiner may believe is descriptive.
Descriptive marks. A term is descriptive if it “conveys an immediate idea of the ingredients, qualities or characteristics of the goods.” Salty for a brand of crackers is an example of an immediate idea of the characteristic of the good. As I mentioned, some marks may walk the line between suggestive and descriptive, and if you choose a mark that could be either, you may need to convince the USPTO that your mark is actually suggestive not descriptive.
Generic marks. Generic marks are the common names for goods and services. Think “desk” for a desk or “chair” for a chair. These marks are not registrable. (Note that marks which may have been originally distinctive can become generic over time if they lose their distinctive character.)
If you are contemplating a business name, I suggest you consider the above points, whether or not you intend to immediately seek a federal trademark registration. Base your name on what works for you, but also make sure that after all the time and money you put into it, that you can protect it from others who may want to ride your coat tails! Fanciful and arbitrary marks are the easiest to trademark, followed by suggestive and not descriptive marks. On the other hand, suggestive marks are less costly to market, since by their nature consumers already have some association between the mark and the goods or services.
None of the information posted on this site constitutes legal advice or forms an attorney-client relationship, and there may be facts not discussed here that are relevant to your situation.
Note that a USPTO search may not be sufficient for all proposed marks, and in many cases a more comprehensive search is recommended. Trademark matters are highly fact-sensitive. Please consult an attorney for more information about your proposed mark.
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