Alright, so you have come up with a killer business name and concept. You have even created a great logo and now you are looking to have this business logo trademarked so that you may protect it while you grow. Simple, right?
For a trademark to work for your business, it has to be strong enough to be protected. This essentially means that the mark must be distinctive enough that people can identify the source of that particular good just by looking at it.
How does one even go about determining that? Luckily, the Courts have had a long time to narrow this requirement down. Generally, trademarks fall into five categories:
Because the marks in each of these categories vary with respect to their distinctiveness, the requirements for, and degree of, legal protection afforded a particular trademark will depend upon which category it falls within.
A fanciful mark is a mark that is completely made up and only exists as to this good or service. For example “Exxon” or “Kodak” are both completely made up terms that we know associate with each respective company. This is the strongest trademark category in that because the marks are completely made up, they arguably have little to no risk of overlapping with any other already existing marks. They are simply made up words where the only function of the fanciful word/mark is to function as a trademark.
An arbitrary mark is a mark that bears no logical relationship to the underlying product. For example, the “Apple” logo bear no inherent relationship to their underlying products of computers, phones, and now watches. Further, the Nike “swoosh” bears no obvious relationship to shoes. Once again, because this is a distinctive mark like a fanciful mark, it receives a high degree of protection.
A suggestive mark is a mark that evokes or suggests a characteristic of the underlying good. However, it is up to the individual perceiving it to add a little imagination to put it all together. For example, the trademarks Greyhound, Playboy, Jaguar, Citibank and Coppertone are all examples of a suggestive trademark. It is that exercising of imagination where the consumer associates the word or phrase with the underlying product. Suggestive marks are not as strong as a fanciful or arbitrary mark but they do receive a high level of protection.
A descriptive mark is just what it sounds like. It is a mark that describes, rather than suggests, a characteristic or quality of the underlying product. For example, “Holiday Inn,” “All Bran,” and “Dental Center” all describe some aspect of the underlying product or service. They tell us something about the product. Unlike the other types of marks we have discussed so far, descriptive marks are not inherently distinctive and are protected and registered only if they have acquired “secondary meaning.”
“Secondary meaning,” a topic which will be explored in more depth later in this series, takes about five years to acquire pursuant to the USPTO. Gaining secondary meaning also usually requires a massive advertising budget. An individual should discuss their mark at length with their trademark attorney to determine if this is the best course of action.
Finally, a generic mark is a mark that describes the general category to which the underlying product belongs. For example, the term “Computer” is a generic term for computer equipment. Generic marks not protected under trademark law. It is a concern of all business owners and trademark holders that their trademarks may eventually become “generic” due to widespread misuse of the term by the consumers. For example, cellophane, monopoly, zipper and aspirin are all items that were originally trademark protected. However, companies like Xerox were able to successfully prevent their mark from becoming generic by taking a proactive approach.
Deciding which type of trademark to seek for your business is a serious decision with long term consequences.
The next post in this series discusses 10 ways a trademark protects you.
If you are ready to take the next step and apply for a trademark right now, consider Bellatrix PC’s Trademark Packages.