Why Legal and Marketing Conflict over Trademark Strategy

One of the most important issues for any company is picking the company name and product names.

I have worked with countless marketing companies that advised their clients to “be descriptive” when selecting the name of a company or product. The theory is, having a name that describes an aspect of the product or service makes it easier to market that product -- you don’t have to spend as much consumer education or advertising.

Truly descriptive marks may provide cheaper marketing, but they get relatively little protection under the trademark law. In the long run, you may spend more in registration costs and enforcement costs than you save in advertising costs. A descriptive name probably doesn’t stand out as well in the marketplace. I advise my clients to make up a word to use as a trademark (known as a fanciful or coined trademark) or adopt a word that has nothing to do with their product or service (an arbitrary mark).

Types of Marks

Generally, marks fall into one of four categories: fanciful or arbitrary, suggestive, descriptive, or generic. What kind of mark you choose significantly impacts both its ability to be registered and how easy it is to stop others from infringing.

Fanciful or arbitrary marks are the strongest

The strongest and most easily protectable types of marks are fanciful marks and arbitrary marks. No one has used this mark before. These marks are also easier to register because it is more unlikely that someone else has registered something similar. Some of our most-recognized brands are words tha