This post is part of a series of posts entitled A Guide To Intellectual Property Protection. For a comprehensive list of articles contained in this series, click here.
The selection of a trademark can be very important in terms of the trademark owner’s ability to obtain registration and prevent others from using the mark. Trademarks can generally be classified into four basic categories: (i) generic, (ii) descriptive, (iii) suggestive, and (iv) arbitrary. A generic trademark is really not a trademark at all. An example of a generic trademark is the word “zipper,” discussed earlier, which has lost its trademark significance and has come to be used by everyone speaking the English language to describe not the brand of a product, but rather the whole class of products. Thus, when choosing a trademark, it would be improper to choose a word which is defined in a dictionary to mean the type of product on which the trademark is used. In other words, if you develop a type of motor vehicle, don’t choose a trademark such as “car” or “automobile” and expect to be able to prevent others from using your “trademark.”
Descriptive trademarks are also usually poor choices if you intend to be able to prevent others from using an identical trademark. A mark is descriptive if it simply tells the public what the product is or does. For example, if your product is a telephone which may be used in an automobile, the trademark “car phone” would be considered descriptive, since it merely describes what you are selling. Similarly, a trademark such as “Minnesota Mineral Water” would be considered geographically descriptive, since any product coming from the state of Minnesota may be identified with the prefix Minnesota. There is generally no way that a person could prevent others who make a similar product in Minnesota from so identifying their products.
This is not to say that either generic or descriptive words cannot be used as trademarks, but rather, no exclusive trademark rights will be created. If one merely wishes to describe what it is they are selling, and is not particularly interested in uniquely identifying themselves as the source of that product, the generic and descriptive trademarks would be perfectly acceptable.
The strength of descriptive trademarks may be enhanced by establishing “secondary meaning,” which indicates consumer awareness of the trademark as an indication of source. The term “secondary meaning” simply means that a trademark is made up of a word that might be interpreted as merely descriptive, but because it has been used as a trademark for such a long time by a particular manufacturer, the public has come to associate that particular mark with the manufacturer in spite of its descriptive quality. An example of such a mark would be “Kentucky Fried Chicken®” which has come to signify chicken from a certain franchising organization, rather than as descriptive of all fried chicken originating in Kentucky. Since this particular trademark has acquired “secondary meaning” through use in the marketplace, other distributors of fried chicken, even if they are actually located in Kentucky, may not use this trademark which is, at first glance, merely a descriptive phrase.
Suggestive trademarks are stronger trademarks, especially if they hint at some quality of the product without actually telling exactly what the product is. For example, the trademark “Hercules” might be a suitable trademark for a variety of goods since it conveys or suggests an image of durability and strength, but does not indicate what the product is that is being offered.
Arbitrary or fanciful trademarks are the best choice from a legal protection view point. These are words that have absolutely no meaning in the English language prior to their adoption by a particular manufacturer for use with their goods or services. These marks instantly become identified with the particular manufacturer and the exclusive right to use the mark is easily asserted against potential infringers. An example of an arbitrary or fanciful trademark is the trademark “KODAK®” for cameras.
The entire purpose of a trademark is to serve as a unique indicator of the origin of a product or service. Thus, members of the public will come to associate a particular trademark with a particular manufacturer of a product and will ask for the product by that particular name, thus giving the trademark great commercial importance. Therefore, when choosing a trademark, one should try to select a name that will lend itself to the task of serving as a unique identifier of a particular manufacturer in a competitive marketplace.