Names for new companies and products need to be named carefully. This is an area that is diffucult anyone, and especially so if you don’t know the rules. When selecting a name for a company or a product, you should think about what type of mark you have selected. Not all trademarks are capable of being registered, nor enforced as trademarks. The Patent and Trademark office divides trademarks into 5 categories: generic, descriptive, suggestive, arbitrary, and fanciful. Each category is treated differently.
Generic marks are marks that merely state what the business is, and they are never registerable. The theory is that it’s not fair to remove these words from use by other businesses, because use of these words is necessary to communicate to the world what business you are doing. Examples of generic marks are Idaho Chiropractic Clinic, Downtown Drug Store, Veterinary Hospital of Denver, All News Channel. Valid marks can become generic if they become used extensively with a certain product, such as zipper, aspirin, thermos, and Teflon.
Descriptive marks are marks that pretty much describe the business, service, or product. They can't be registered without showing that they have developed secondary meaning. Secondary meaning is recognition among buyers, and can be shown by extensive advertising (to the relevant market) or a long term (5 year or more) presence in the marketplace, or an actual survey among the relevant buying population. Descriptive marks include marks like Bufferin, After Tan, Chap Stick, Easyload, Food World, Holiday Inn, Joy, Litter Basket, Pizzazz, and Oatnut. It pretty much describes what the product or service is. However, descriptive marks are preferred by the marketing people, and they can be reserved, by putting the mark on the Supplemental Register for 5 years, when secondary meaning is presumed. After secondardy meaning is shown, the mark can be registered, and put on the Primary Register.
Suggestive marks are registerable without proving secondary meaning. Suggestive marks may be subtly descriptive, in that they may suggest the product, but not actually clearly identify it. Some interpretation in the mind of the buyer may be required. Examples are Chicken of the Sea (Jessica, it’s tuna fish, not chicken), Roach Motel, Sparkle, Penguin, Air-Care, Brown in Bag, Hula Hoops, Heartwise, Sweetarts, Spray ‘N Vac, 7-Eleven, Wrangler.
Arbitrary marks are registerable without showing seconardary meaning, and examples include Apple, Nike, Camel, Shell, Arm and Hammer. They are real words, but have no relation to the products they are used with. These marks are registerable and are considered strong marks. Any mark that comes close to these marks would be considered an infringement, so they are very enforceable.
Fanciful marks are words that are created just for use as a mark, and have no English language usage. Examples are Clorox, Cutex, Kodak, Polaroid, Adidas, Coke, Pepsi, and Exxon. These marks are registerable and are considered strong marks. Any mark that comes close to these marks would be considered an infringement.
I hope this helps people when selecting a mark for a new company or product.
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