All great brands are developed from great initial ideas. But not all great ideas necessarily make a great brand. If you are in the process of developing your new business, you clearly have gone through the initial mental workout of deciding what your business / brand will be called. You may have even narrowed down your options to 2 or 3 great-sounding candidates, but how viable are these names for trademark registration? Moreover, how strong are these names really in the branding context? A good way to begin brainstorming your business or brand name is to think about how distinctive the name is, and whether the name may be descriptive of the goods and / or services your business will offer.
We discussed earlier how it is important to initially ensure that your chosen brand name stands apart from other pre-existing brand names, but another equally important consideration is whether your chosen name is even protectable as a trademark on its own (a strong “distinctive” mark v. a weak “descriptive” or “generic” mark). For registrability and protectability purposes, trademarks are often viewed on a spectrum, with “fanciful,” “arbitrary,” and “suggestive” marks being the strongest marks, and “descriptive” and “generic” marks being the weakest. Here’s a breakdown of what each of these terms mean:
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Fanciful marks are distinctive, and the strongest category of marks. These are marks that are comprised of made-up words not appearing anywhere else (even in different languages)—literally words that you come up with in your head. These are the strongest because it is very unlikely that any other pre-existing marks will prevent you from getting your trademark registration, or that any third party will contact you and demand you cease using your mark. Additionally, you will have a much easier time enforcing your rights against any third-party infringers due to your ownership of such a unique mark (e.g., you will have a good argument that the third-party is infringing because your mark is unlike any other mark and has no inherent meaning that the third-party infringer could rely on). Some good examples of fanciful marks include PEPSI, KODAK, and EXXON.
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Arbitrary marks are also distinctive, and the next strongest category. These are marks that are made up of actual words or phrases that are in common linguistic use, but which have nothing to do with the goods or services offered by the brand; they are used in an unexpected or uncommon way. For similar reasons as discussed above in the “fanciful” category, arbitrary marks are easier to secure and enforce due to their unique nature. Some good examples of arbitrary marks include APPLE for computers, AMAZON for online retailer services, and OLD CROW for whiskey.
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Suggestive marks are also distinctive, and the next strongest category. These are marks that, like arbitrary marks, use actual words or phrases that are in common linguistic use, but which only suggest what the brand’s goods or services may be without being overly descriptive. Suggestive marks require imagination, thought, or perception for consumers to reach a conclusion as to the brand’s goods or services, and the “suggestive” category is generally considered the lowest threshold for a new brand to reach to be protectable. Some good examples of suggestive marks include GREYHOUND for quick transportation services, MICROSOFT for microchip computer software, and ANDROID for artificially intelligent user interactive software.
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Descriptive marks are not distinctive and are often considered weak and unprotectable. Descriptive marks merely describe or deceptively misdescribe the qualities, characteristics, functions, features, or purposes of the brand’s goods or services (unless the mark owner can show proof that the public has come to associate such descriptive elements with the brand itself, notwithstanding the mark’s descriptive nature). The policy behind descriptive marks being unprotectable is that businesses should not be able to enforce and prevent other businesses from using descriptive terms to promote themselves—such would severely limit the free market and result in monopolies across each class of goods / services (e.g., a bed and breakfast would not be able to register or enforce BREAKFAST IN BED as a trademark, nor would a toy store be able to register or enforce a name like FUN KIDS TOYS.
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Generic marks are also not distinctive, are the weakest category of marks, and cannot be registered or enforced. These are generally terms that the relevant purchasing public understands primarily as the common or class name for the goods or services offered by the brand. This can include terms like RECLINER for armchairs or RUBBISH BIN for trash cans (to name some very basic examples). Words that are often used by the public, even if initially protectable, can also fall victim to “genericide”—this is where the public comes to understand a trademark to be the name of a product itself, rather than identifying a brand. Some examples of marks that have fallen victim to genericide over the years include FRISBEE, ESCALATOR, ASPIRIN, KLEENEX, and ZIPPER.
When brainstorming a great brand name for your new business, it is important to carefully weigh the distinctiveness / descriptiveness of the names you come up with. Making these determinations early in the business planning and development process will save you lots of hassle and financial strain, for an inherently distinctive mark will likely (1) be a fast-track to registration, (2) help prevent you from having to rebrand (sometimes years) down the line due to a third-party’s ownership of a similar or identical mark, (3) help you avoid a costly trademark infringement lawsuit for the same reason and (4), above all, ensure that your brand is unique in commerce and that consumers will come to identify and appreciate your brand from others. A non-distinctive mark (a mark that is inherently descriptive or generic) could also result in other businesses reaping the benefit from your hard-earned goodwill due to confusion between similar brands, or even your business name inadvertently being tarnished by another company’s bad business practices. We want to avoid that.
The good news is that you are thinking about this at the right time. Solid branding strategy early-on is a vital foundation to a business’ future success, as rebranding, legal fees, and PR efforts and expenditures are often very time-consuming and costly (not to mention the time wasted in promoting and developing a brand that can no longer be used). Always consult with an experienced trademark attorney before taking the exciting steps of starting a new business—and get your “distinctive” brand off to a great start!
For more information on this article and this topic, contact Charles Wallace.
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