The Different Kinds of Trademarks
When you are on a road trip, what sign would make you stop and eat: the Golden Arches of McDonald’s or the red roof of a Pizza Hut? Would your spouse be excited to receive a light blue box for their anniversary?
As you can see, color and images play a huge role in reminding customers what your company, its products or its services stand for. These are all trademarks: the visual aspect of your brand. Trademarks can go beyond visual, and include sounds (“Intel inside”) and scents.
A trademark identifies your company as the source of a particular product/service in the marketplace. Trademark law protects consumers by preventing companies from confusing them.
Selecting the name of your new company, product or service is therefore a big deal.
There are five basic types of trademarks:
1. Arbitrary words that have nothing to do with your company, product or service, like APPLE computers or OLD CROW whiskey.
2. Fanciful or made-up words that you create to be your brand name, like KODAK cameras, film and accessories or XEROX for copying equipment.
3. Words that suggest a quality of your good or service, such as GREYHOUND for bus services or MICROSOFT for software for microcomputers.
4. Words that describe a quality of your good or service, such as DURHAM HEATING AND AIR SERVICE for HVAC repair in Durham, NC or QUALITY BATTERIES for a store that sells replacement batteries for cell phones and other electronics.
5. Generic terms such as “computers” or “email”.
Arbitrary and fanciful trademarks are legally considered the strongest and most distinctive because your competitors are not using these words to describe their products or services. Your name really stands out to identify your company in the marketplace. Think how random APPLE was for a computer company when it started or that KODAK is still distinctive for chemicals and film. Apple is arbitrary and Kodak is coined or fanciful.
Suggestive trademarks are able to be registered and protected. These are words that require the customer to use some imagination, thought or perception to determine what product/service is being offered. These are not as strong as arbitrary or fanciful marks, but are considered easier (cheaper) to market because they suggest an aspect of the product or service without having to educate the consumer. GREYHOUND for transportation is suggestive.
Words that are descriptive or generic do not function as trademarks and cannot be registered. A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified products/services. This is because if you use a word that describes or names your product/service, you are highlighting the product/service or its features, and not your company as the source of the product/service. In addition, all suppliers of that product/service need to use that word to describe the product/service (speedy, quality, durable, tasty, etc.)
It is fairly difficult to determine when a mark suggests a quality of the product/service and when it merely describes an aspect of the product/service. For this reason, I recommend finding an arbitrary or fanciful mark.
How do you do that? Brainstorm.
For picking arbitrary marks, find a word that means something to you but has nothing to do with your business. Think of things that are important to you: people, places, collections from childhood, names of boats or beach houses, hobbies, etc.
Some clients have coined names (fanciful marks) based on acronyms of their children’s names.
Think of a desired result of using your product or service instead of a quality.
Search the proposed name in a variety of search engines, and with and without quotes to see how unusual it is.
See if the domain name is available (this may or may not be significant).
Search federal and state trademark databases to see if this trademark has been registered to someone else.