Business owners have become more and more aware of the importance of protecting their brand and are hiring attorneys or heading to the trademark office to secure exclusive ownership of their brands. Most of my clients come to me after they’ve already started building their brand or have been in business for a while and are married to their brand names because they’ve already invested so much time, money and energy into it. What they lacked was knowledge about the different trademark categories and the different levels of protection afforded to each category. And who can blame them? It’s not general knowledge, it’s one of those topics that only trademark attorneys really know about, but it is something that new business owners should consider early in their business building process in order to increase their chances of receiving trademark protection.
Some trademarks are considered strong marks and are therefore more amenable to trademark protection. Other marks may not be protected at all. While some may not be eligible for protection until after they’ve gained “secondary meaning”, which is basically where the general public associates that particular brand with the services provided due to the brand’s advertising efforts.
There are four categories of trademarks recognized under trademark law and they are generic, descriptive, suggestive, arbitrary and fanciful.
Generic marks are the common names for a product or service. For example, you wouldn’t be allowed to obtain protection for a mark for your tax preparation services where the mark is “tax preparers”. Or if you were a dog food manufacturer, your mark couldn’t be “dog food”. These terms are the common words for those particular good or services and while trademark law seeks to provide exclusivity to owners to differentiate their brand, it doesn’t wish to stifle trade and prevent others who are in the same business from being able to use terms that they would need to use to describe their goods or services without infringing on your trademark.
Descriptive marks are trademarks that describe a characteristic or trait about the goods or services. While these aren’t favored, they may be capable of protection, if after a period of exclusive use, the general public comes to associate a certain brand with the use of the mark in connection with the goods or services provide. Best Buy was unable to obtain registration of its mark on the Principal Register when it first sought protection because it was considered descriptive in that it provided computers and other technology at the lowest prices possible, hence being a best buy. Because the low price was a main characteristic of its goods and services, it had to register on the Supplemental Register and after 5 years of using the term exclusively, it was able to obtain full protection on the Principal Register, once the public associated the term “Best Buy” with the electronics store.
Suggestive terms are often confused with descriptive terms; however suggestive trademarks are protectable on the Principal Register because instead of describing a feature of the goods or services, it merely suggests something about the product or service. This is often an argument used in response to Office Actions for descriptive refusals, by showing the trademark is actually suggestive of the quality as opposed to being descriptive of the goods or services.
Arbitrary and fanciful marks are the strongest trademarks that are available for protection. Trademarks that are arbitrary or fanciful have no relationship to the mark as applied to the goods and services. Arbitrary marks are common words that are used in an arbitrary manner. A good example of an arbitrary term is Apple for computers. Fanciful marks are words that are made up and have no meaning outside of that attributed to the brand owner. A good example of a fanciful mark is Xerox.
While it seems most logical to use a mark that specifies your goods and services, trademark law favors the opposite. Business owners should try to come up with arbitrary or fanciful terms in order to increase their chance of protection. It’s also less likely that a likelihood of refusal argument will arise when you use arbitrary or fanciful terms because there’s a slim chance that another brand owner made up the same term as you or is using a common term in the same manner in which you would. In sum, you should be thinking about trademarks for your business as soon as you think about starting a business.