Choosing a valid Trademark - Takeaways from the BarCamp talks
I’ve had the opportunity to speak at a few BarCamps recently about choosing a protectable trademark. I will have a podcast covering this topic soon with examples and more complete explanations, but I thought it would be useful to put up some highlights in the meantime.
Trademark law deals with identity.
Trademark law is primarily concerned with identifying goods or services with their respective sources. Virtually anything can be used as a trademark, but the law sets some limitations to avoid losing the common meaning of whatever a business adopts as their mark.
The more a Trademark describes your product or service, the harder it is to get protection.
Trademarks require distinctiveness to be meaningful. Otherwise a mark would not be effective at identifying a business. Generally speaking, the more your trademark relates to your good or service, the harder it is to gain legal protection for the mark.
The framework (known as the ‘Abercrombie’ test):
- Generic marks - Never valid.
- Descriptive marks - Valid upon a showing of “secondary meaning.”
- Suggestive marks - Generally valid immediately.
- Arbitrary or Fanciful marks - Generally valid immediately.
Explanations (skip this if you don’t like details):
A generic mark is the common name for a class of good or service. For instance, COMPUTER, VIDEO GAME and RESTAURANT are all generic marks as they relate to computers, video games, and restaurants, obviously respectively. So a business would not be able to use any of these phrases exclusively for those goods or services.
A descriptive mark is one that describes the good or service literally, but is not merely its common name. An example might be RED ROOF INN as it relates to an inn with a red roof. By default these types of marks are not immediately valid, but can become valid if consumers begin associating the mark with a particular business. This is called acquiring a secondary meaning.
A suggestive mark is one that is somehow connected conceptually to the good or service, but requires some use of imagination to understand how the mark relates to it. An example might be RACETRAC for gas stations. Generally speaking, these types of marks are immediately eligible for protection.
An arbitrary or fanciful mark is one that has no logical connection to the good or service. Arbitrary marks are existing, unrelated words, while fanciful marks are invented words. AMAZON as it relates to an online retail store might be an example of an arbitrary mark, and MICROSOFT as it relates to computer software might be an example of a fanciful mark. Like suggestive marks, arbitrary or fanciful marks enjoy immediate eligibility for protection.
Whether a mark is valid is only the beginning.
Whenever you are choosing a mark, you must balance the ease of gaining trademark protection with the marketing advantages or disadvantages a mark gives you. You also need to avoid using a mark that overlaps with an established mark. There are other factors to consider, so it’s best to consult with an attorney when the time is right. Still, this framework should give you some guidelines when you are initially naming your business, product, or service.
I’ll cover more in the podcast.
If you are one of the over 6 billion people who didn’t catch any of my BarCamp talks, stay tuned for my upcoming podcast, which will include more examples and (hopefully) more accessible explanations.
