It can be difficult to trademark certain words and phrases, especially when they’re already in popular usage, or are descriptive phrases (especially if you use the descriptive phrase to describe your patent). However, potential product and service marks don’t simply break down into those that are trademarkable and those that are not.
Such marks fall across a spectrum spanning the distance two extremes, the purely abstract, and the generic and overtly descriptive. The marks in this spectrum can be roughly grouped into 5 categories, with each category being more difficult to patent than the one preceding it.
Securing a trademark and subsequently protecting it from legal challenges, particularly from imitators and competitors, can be a challenging process. If you would like assistance with a particularly challenging trademark, contact the Law Office of Michael O’Brien by calling 916-760-8265, or sending us an email using our site’s contact form.
The ability to trademark a word or phrase depends on the nature of the phrase, how frequently it is used, and the contexts in which it is typically used. Below is a basic overview of the 5 types of marks, and their relative strengths and weaknesses when it comes to securing trademark protection.
Fanciful marks are the most abstract type of trademark. They may not even be actual words.
Fanciful marks are the most abstract, easy to patent marks because they are words that didn’t exist before they were coined to serve as a trademark, or are modifications of existing words. The aforementioned “Google” is a great example of a fanciful mark. In this case, the name was derived (possibly accidentally) from the word “googol,” the name of a very large number. Other examples of fanciful marks include Xerox and Kodak.
Arbitrary marks are usually real worlds, but don’t have any literal relation to the product or entity they’re attached to.
Arbitrary marks are existing words and phrases that are used to name products or companies which don’t have any literal link to the meaning of the phrase. “Apple” is an excellent example, as it’s been used by at least two prominent companies in the last few decades (and spawned at least one lawsuit between the two): Apple Computer, now most famous for the iPhone line of products, and Apple Corps., the record company owned by the Beatles. Obviously, neither company had anything to do with literal apples, and thus had an easy time getting obtaining trademarks. On the other hand, an orchard owner wishing the trademark the name “Apple Orchard” or “Apple Farm” would have a very difficult time, as those are literal descriptions of the business conducted by the hypothetical orchard owner. It’s the distance between the literal meaning and its use as an arbitrary mark that makes these marks very easily trademarked in most cases.
Suggestive marks imply the nature of what they represent, but don’t name it explicitly.
Suggestive marks are words that, well, suggest the nature, genre, or target audience of a product without being explicit. “Internet Explorer” implies that it is the name of something that allows users to view and explore the Web. The first word in “Capital One” suggests that the trademark has to do with the financial world. “YouTube” invokes the memory of old-time tube-powered televisions, emphasizes home user participation. Suggestive marks give a hint to potential customers and shape their expectations. Suggestive marks are still fairly abstract, and may in fact invent words (such as “YouTube”), and hence are usually easily trademarked.
Descriptive marks are where you cross the line into non-trademarkable territory.
Descriptive marks are phrases that might be somewhat creatively used to describe what they represent, but that’s the issue—they describe. They are very literal, which is why descriptive marks generally can’t be trademarked. “Quick and easy,” “highest quality,” and “complimentary service” are examples of descriptive phrases which are just too integral to the everyday lexicon to be granted some sort of special status.
But that doesn’t mean that you can’t use them for your products, or even as the name of your business. You just can’t trademark them. However, if your company or product subsequently becomes extremely famous, the descriptive mark that you’ve attached to them may achieve what is known as “secondary meaning.” A mark with secondary meaning is one where the phrase it is comprised of is now most commonly associated with its use as a mark. For instance, when the company now known as IBM was named International Business Machines, the phrase could not be trademarked. But after several years of operation, IBM became so famous that the phrase “International Business Machines” was so tightly linked to the company that customers could potentially be taken advantage of by imitators using the name. As a result, IBM was able to secure a trademark for the phrase, despite the fact that it was a descriptive mark. But that’s the trick—you have to make the descriptive mark famous first.
Generic marks are the bottom of the barrel—words and phrases that are so plain and literal that they can never be trademarked.
Generic marks are the words that most people use to describe items when they don’t care about its brand or what model it is. “Computer,” “pencil,” “chair,” “car,” “smartphone”: these are all words that are so commonly used that to grant anyone a trademark—regardless of how successfully the generic mark had been popularized in a specific context—would do a disservice to society.
Generic marks are perhaps the most fascinating category of mark because they’re sort of the opposite of descriptive marks. A descriptive mark can eventually be trademarked with a lot of hard work. On the other hand, a trademark can eventually become a generic mark—thus losing its trademark—if it becomes used too broadly and indiscriminately.
Many of the words that you take for granted as being literal and obvious began their lives as trademarks.
Below are just a few of the words which we take for granted as parts of the English language which were originally trademarked—and even invented for the purpose—which have since lost their trademark status:
- App store
- Flip phone
Failing to properly protect a popular trademark by holding imitators accountable can result in a trademark being put into the public domain. Just a few of the currently popular trademarks that may become legally generic in the next few years (if their owners aren’t careful) include:
- Adrenalin (a hormone known generically as epinephrine)
- Bubble Wrap
- Memory Stick
Velcro is another trademark that has been running the risk of becoming generic. Recently, Velcro Companies (the owner of the trademark) began a video campaign to ensure that its trademark for the well-known hook and loop fastener did not enter the public domain. Xerox Corporation ran a similar campaign a few years ago for its photocopy machines. Firms have taken this approach due to the precedent set by DuPont’s Teflon education campaign, which saved that mark from becoming generic, as decided in a court case in 1975.
The vast quantities of trademarks that have slipped into the public domain, or are in danger of doing so, are a good reminder that securing a trademark is only the first legal hurdle. Protecting your brand’s trademark requires diligence and a willingness to raise legal barriers to would-be imitators. The Law Office of Michael O’Brien has the technical and practical knowledge of trademark law necessary to help you secure and protect your trademarks and other intellectual properties. For more assistance, contact us by calling 916-760-8265, or email us using our site’s contact form.