What Makes a Good Trademark?
Not all trademarks or business names are created equal. Some are stronger and more defensible than others, and the type of mark you choose can be an important factor in determining the amount of protection your mark will be accorded. (Table of contents) Fanciful Marks In general, the strongest marks–those accorded the most protection by the law–are made of totally unique or created “words” which have no direct equivalent in English or any other language. These are completely fanciful marks such as Kodak for film and cameras, Frisbee for flying discs, Tylenol for acetaminophen, etc. Although it normally takes massive advertising and marketing campaigns to establish these trademarks (i.e., to get people to associate the mark with the goods), once established they are granted the highest level of protection by the courts, so that anyone else using that mark or anything like that mark could be held liable for infringement, even if used on entirely different types of goods or services. (T
Choosing the right name or logo for a business or product is an art. Companies sometimes pay thousands of dollars to marketing and identity research firms to help them find the “perfect” name for a product or business. This is oftentimes money well spent, since the value of a name can repay those costs many times over, once consumers internalize the name and return to it for repeat business. A name can even become a status symbol of sorts, e.g. Nike, Ty, or Guess, allowing companies to charge well over the normal markup for the product. Whether you spend thousands on naming experts, or can only afford to pull a name out of a hat, the naming process is woefully incomplete without a legal analysis of a name’s trademark potential. Unfortunately there is no quick formula for choosing a good mark. However, As a general principle, you will want one that is (1) distinctive, and (2) not forbidden, and (3) not preempted by an existing trademark. Begin by selecting selecting several possible mar
8. Terms used to describe the formatives that make up a trademark • Descriptive (Best Foods) • Traditional (National Car Rental) • Suggestive (Jiffy Lube) • Coined Classical (Xerox) • Classical (Lycos) • Family Name (Dell Computers) • Tonal (Google) • Abbreviation (AOL, AT&T) • Truncated (FedEx) • Joined (Microsoft) • Foreign (Haagen Das) • Geo Graphic (Cascade Alarm) • Object Based (Visa) • Color (Green Giant) • Size (Green Giant) • Playful (Yahoo) • Verbal (Sprint) • Adjective (The Daily Show) • Numerical (7-11) • Futuristic (Infiniti) • Character Based (Mr. Goodwrench) The key aspect you must know is that the trademark must be distinctive. The more distinctive it is the more effective it is as a trademark and the less likely it is to be disputed. There are three basic distinctive categories – coined, arbitrary and suggestive.
Certainly, a good trademark should be memorable. It should stick in the minds of your customers and remind them of you and your product. In addition, your trademark should be legally protectable so that you can keep others from stealing it or infringing upon it. The strongest legal protection comes with federal registration. Unfortunately, many memorable trademarks are either difficult or impossible to register with the Trademark Office. One of the pre-requisites for registration of a trademark is that it be distinctive. Distinctiveness is a term of art which has a very definite, if not always clear, meaning. For trademark purposes, every trademark falls into one of five categories of distinctiveness ranging from generic to fanciful. In between are descriptive, suggestive, and arbitrary trademarks. The level of protection afforded trademarks corresponds to its level of distinctiveness. A generic mark is one that states a basic nature of a product or service. These are terms which would
A strong trademark starts with a good name. Richard Berman, head of the trademark group at Faegre & Benson, a Minneapolis-based law firm, says that there are three types of trademark names: coined, arbitrary, and suggestive. “A coined name is one that when you go to the dictionary, you can’t find it,” he explains. “Kodak,” for example. An arbitrary name is one that has no meaning in the context of the products being sold-“for example, Camel, for cigarettes.” In contrast, a suggestive name suggests the nature of the product. Berman cites, Hamburger Helper, “as a wonderful suggestive trademark”-the public identifies the product’s use with the name, yet the name is distinct enough to be a trademark. Which outlines a chief trademark naming challenge: balancing consumer recognition with the ability to register the name. While more distinct names might be easier to register as trademarks-there’s less chance that someone’s already using them-they are also more costly to establish in the marke
