As a provider of products or services, you may want to register your trademark with the United States Patent and Trademark Office (USPTO) for all the benefits the registration provides. But registering your trademark at the USPTO can, sometimes, be a complicated task. That is because, not all trademarks are registrable. There are a number of obstacles that you may encounter during the registration process. However, a little due diligence before filing your trademark application can save you a lot of time and grief in the process.
In this article, I like to guide you through the selection of a trademark that will be relatively easy to register. Often, one is motivated to select a trademark that describes his/her product or services. However, such a trademark is descriptive of the product or service and, as such, it is very hard to register. See, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015), if you’re interested in the legalese!
What this means is that you should not be selecting a trademark that describes your product or service. After all, everyone is entitled to use that trademark to describe the product or service and it would be unfair to allow you to exclude others from using the trademark. It is also understandable why you may want to select a trademark that promotes your product or service. After all, you want your customers to know what your product or service is and you would like your trademark to inform your customer of that fact. But let your advertising do the task of promoting your product or service. Your trademark should only be selected to distinguish you from your competitors. To that end, choose what is called a distinctive trademark.
In the trademark universe, marks can be categorized as (1) generic, (2) descriptive, (3) suggestive, (4) arbitrary, and (5) fanciful. On the one side of the spectrum, a mark that is generic can never be registered. For instance, coffee is a generic name for a beverage that contains caffeine. If you have a coffee shop and want to select a trademark, it would be unwise to file a trademark application for the mark “coffee” in connection with selling coffee because the mark “coffee” is a generic mark. On the other side of the spectrum, a mark that is fanciful is readily registrable. The trademark “Exxon” which the Exxon company uses as its trademark is a fanciful mark because the word “Exxon” is a made-up word and has no meaning or relation to petroleum products. In the middle of the spectrum are the descriptive, suggestive, and arbitrary marks. As mentioned above, a descriptive mark is not readily registrable but can become one if it has gained notoriety, or in the trademark parlance, secondary meaning. A suggestive mark is one that forces the consumer to use his/her imagination to arrive at the meaning of the trademark, while an arbitrary mark has a meaning but is not in any way related or connected with the product or service. The trademark “Apple” which the Apple company uses as its trademark is an arbitrary mark because the word “Apple” has nothing to do with Apple company’s products, i.e., computers.
I recommend choosing a mark that is either suggestive, arbitrary, or fanciful. An easy way of arriving at a fanciful mark is to select two words, taking a few letters from the beginning of the first word and a few letters from the end of the second word and connecting them to arrive at a word that is not in the dictionary.
If you need help regarding a trademark or other intellectual property case, contact Ahmadshahi Law Offices today and get an initial consultation.
Michael M. Ahmadshahi concentrates its practice on patents, trademarks copyrights, trade secrets and other intellectual property and business law. Call us toll free at (800) 747-6081 or direct at (949) 556-8800 or email firstname.lastname@example.org and let us help you with your IP and business matters.