What Type of Trademark is Best For Your Product or Service?

2010-12-13T15:44:00.001-08:00

Things you should know about selecting a trademark, what its relative value will be, and its advantages and disadvantages in marketing.

Choosing a great trademark that will not only be memorable, but also stand up to formal registration for your product or service can be a daunting task. Knowing a little about the way trademarks are organized into a spectrum can give you a good foundation for choosing a trademark that is right for your business. When creating names or logos for companies, products and services, it's important to consider the strength and long-term value of a mark in additional to determining its registrability. In general, trademarks that are "inherently distinctive" (strong), or have acquired distinctiveness over a period of time, are generally your best bet for creating a memorable brand name. Moreover, the strength of a mark has an enormous impact on whether a mark will be registered and the Registry it will be registered on. The U.S. Patent and Trademark Office ("USPTO") recognizes two types of registered marks, "distinctive" and "non-distinctive, “ i.e. descriptive trademarks, which go into either the Principal Register or the Supplemental Register, respectively. The Principal Register is where you want to be. That means you have the highest statutory trademark protection available and are reasonably safe from having anyone else challenge your mark. If properly maintained, a registration lasts for ten years and can be renewed thereafter for periods of ten years. Marks on the Principal Register cover the Suggestive, Arbitrary and Fanciful side of the Trademark Spectrum.

The Supplemental Register is a kind of "trademark purgatory." It does not offer the owner the protections that accompany marks on the Principal Register because it is for Descriptive Trademarks. Rather, it only provides notice to would-be users of the mark that it is already in use. A Supplemental Register registration, if properly maintained, also lasts for ten years and can be renewed thereafter for periods of ten years. Marks on the Supplemental Register cover the Descriptive side of the Trademark Spectrum only. The following section covers the Spectrum in more detail.

The Spectrum of Trademarks: Descriptive, Suggestive, Arbitrary and Fanciful

Descriptive Marks

Descriptive marks are the easiest to market but the hardest to register. A descriptive mark is one that says exactly what the product is. In general, any mark that describes a quality, characteristic, ingredient, purpose, function, etc. of the product or service is descriptive. Other descriptive marks can be geographic, laudatory or personal surname words. All of these are considered weak marks. The USPTO feels that a product description is not a mark because it describes all other competing products too. Please note, however, a descriptive mark can be registered on the Principal Register (in time) if the mark through continuous and substantial use has acquired distinctiveness through consumer recognition or "secondary meaning."

Suggestive Marks

Suggestive marks are a bit easier to register and a bit harder to market. If information about the product or service given by the mark is indirect or vague, then this indicates that the mark being used is "suggestive." An example would be "Bravo®." While this mark does not explicitly describe what the underlying goods or services are, it hints at it. You may suspect that it has something to do with the performing arts, but you don't know if the mark is for a channel, a theater or a magazine. A name like this requires a leap of imagination and necessitates a little education to explain to consumers what it is. Sometimes a sub-title helps, as in "Bravo-the culture channel." Since the word is suggestive you have a better chance of getting it on the Principal Register than if it was an exact description. Other examples of suggestive marks are Greyhound® for buses and Sunkist® for oranges.

Arbitrary Marks

Arbitrary marks are common English words that are used in a way that their normal meaning has nothing at all to do with the product or service. They are relatively easy to register and relatively hard to market. (See how there is an inverse relationship between trademarks and marketing? The easier it is to register the trademark, the harder it is to tell consumers what the product is. And the easier it is to market it, the harder it is to prove the trademark is unique.) "Nickelodeon®" is an example of an Arbitrary mark. It's a fun, silly-sounding word but the actual meaning is "a five-cent movie theater," which doesn't have anything to do with children or cable television or green slime. But, it has been so well-marketed that now "Nickelodeon" means "kids." This required much effort and many dollars in advertising to establish. But once established, the mark became very valuable property. In other words, the more money invested in giving meaning to an Arbitrary mark, the more value it has in the long run. Arbitrary marks are easy to register because the words have no connection to the product. A five-cent movie theater might have a hard time registering "Nickelodeon," but not a TV network. "Apple® Computers" is another good example. Since apples and computers have no connection, it is a strong, defensible mark that has gained recognition value with consumers over the years. A fruit company named "Apple" would have a very tough time.

Fanciful Marks

The final category is Fanciful, which is the easiest to register and the hardest to market. Fanciful marks are coined words that never existed before. They do not exist in any dictionary and are completely made up. A classic example is "Oreo®." This name has nothing to do with chocolate sandwich cookies, or anything else for that matter, because somebody simply invented the word. (It exists in the dictionary only as a slang word derived from the Nabisco trademark.) The Oreo trademark is so strong it has almost become an icon. Everyone knows what an Oreo is, thanks to decades of advertising and marketing. And, the mark is un-challengeable.

Depending on how important it is to your business to have a strong mark, or how much time and money you are willing to invest in educating the public in your marketing efforts, you can decide whether your new name should be Descriptive, Suggestive, Arbitrary or Fanciful. In the very short term, or for a limited life product or service, Descriptive is better because it starts selling products and services right away. However, a Descriptive mark cannot be registered on the Principal Register absent a showing of secondary meaning. If your product has longevity, and your business wants it to be around a long time, and can wait a while until the public catches on, then Arbitrary and Fanciful marks are the best bet. But, these marks have the disadvantage of being expensive to establish and require lots of start-up advertising. For more information, please visit our web site at http://www.americantrademark.com.

The American Trademark Company, Inc.

What Type of Trademark is Best For Your Product or Service?

Things you should know about selecting a trademark, what its relative value will be, and its advantages and disadvantages in marketing.