Types of Trademark Names: How to Best Select a Name for Your Product or Service

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Josh Gerben

Washington, DC

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Practice Areas: Intellectual Property

Types of Trademark Names: How to Best Select a Name for Your Product or Service

Protectable trademarks generally fall into four categories: coined terms, fanciful marks, suggestive marks, and descriptive marks. To illustrate, let’s imagine we are going to start a dry-cleaning business in Virginia and need to pick a name for our company.

The type of trademark which will grant you the broadest possible protection under the law is called a coined term. A coined term is a simply a made-up word.  Kodak® and Lululemon® are examples of coined terms. Coined terms grant you broad protection because they are distinct. At its core, trademark law services to prevent customer confusion between brands, so if your trademark is a made up word chances are no one will confuse it with a different company or corporation. For our dry-cleaning business in Virginia, an example of a coined term would be “Levatco”.

Another strong type of trademark is a fanciful mark. A fanciful trademark is typically a word which is commonly associated with something vastly different than the product or service you’re offering. Apple® is the best example of this. Whereas now many people associate apples with computers, the term apple is typically associated with a type fruit.  Therefore using the trademark Apple on computers grants the Apple trademark broad protection under the law. To go back to our example, our Virginia dry-cleaning business could be called “Pears” and receive broad protection because dry-cleaning has very little to do with fruit.

However, our potential customers may not know what services we offer under the Levatco and Pears trademarks by name alone¾  and companies fear that customers would then move on to a competitor¾say, “Fresh Dry Cleaning.”  This fear is why people tend to use the third type of trademarks¾ suggestive marks.

Suggestive marks can be explained as being one step away from specifically describing your product or service offering. “Fresh Dry-Cleaning” would be a good example.  Dry-cleaning your clothes makes them “fresh”¾ hence this is a suggestive mark.  Unlike coined terms and distinctive marks, a suggestive trademark will only grant you limited protection under the law assuming the trademark application is approved. Nevertheless, as hinted above, a suggestive mark can be necessary for marketing purposes. In this case “Fresh Dry-Cleaning” might be a decent name to land on because it would be instantly recognizable to potential customers precisely what it is we do.

Descriptive marks are what they sound like¾ they describe the product and/or service you’re offering. “Yellow Bananas” is an example because bananas are typically yellow. Descriptive trademarks will almost always be rejected from registration on the Principal Register.

One last thing to keep in mind are generic trademarks. Generic trademarks can never be registered because doing so would deprive others from using the term to describe their own products or services. An example here would be calling our dry cleaning company “The Dry Cleaner.”

When choosing a name, try to weigh how important broad protection of your trademark compares to the marketability of your mark. If you have the financial ability to go to market with a coined or distinct term and build brand awareness, your trademark will get broad protection under the law.  But if you need clients to be able to tell instantly what your product and/or service offering is all about, use a trademark which is slightly more suggestive.

 

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