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Wealth of Ideas, May 2005
The process of obtaining a trademark or service mark
is not as simple as one might think – and it’s
something the entrepreneur should consider when choosing
a name for a new business. For some very basic information
and surprising facts about trademark law, read on:
A trademark is a word, symbol, or combination of words
and symbols that serves to identify the source of goods
(i.e. Coca-Cola). A service mark performs the same role
with regard to services (i.e. FedEx). Trademarks cannot
be merely descriptive of the goods themselves.
The measure of a good trademark is its distinctiveness
in sight, sound and connotation. Trademark distinctiveness
can be described by the following four categories, from
most distinctive to least distinctive:
1. Coined or Arbitrary marks – these are
either made-up words (Verizon, Xerox) or existing words
with no apparent connection to the product (i.e. Apple
computers and Camel cigarettes). These are the most
distinctive marks and thus have the strongest legal
protection.
2. Suggestive marks – These marks suggest
some feature or attribute of the goods without being
descriptive, as in the use of “Coppertone”
for suntan lotion.
3. Descriptive marks – Much less distinctive
than the first two categories, descriptive marks are
generally only allowed to be registered if they have
a secondary meaning. However, some descriptive marks
that have been in use for many years or decades are
strong marks because of their longevity, such as “Holiday
Inn” – which is just what the name suggests.
4. Generic terms – These least distinctive
of marks are technically not marks at all. If your company
produces yarn, you can’t trademark yarn.
Besides the distinctiveness requirement, marks also
cannot be registered if they are offensive or inherently
barred. Inherently barred marks would include, for example,
those that made use of the name and/or likeness of a
living president; the name/likeness of any living person
without their permission; or the Olympic symbol.
An interesting fact about trademarks is that they are
examined phonetically – so misspelling “phone”
as “fone” won’t make it sufficiently
distinctive in itself to be a trademark for a phone
manufacturer; it would need to be paired with another,
more distinctive, word (or words). Also, the mark will
be examined in consideration of foreign words that have
a descriptive meaning – so if you want to use “Aqua”
as a trademark for bottled water, you’d better
reconsider.
Finally, a note on the proper use of trademarks: Trademarks
are adjectives. The mark should be followed by a descriptive
term, such as “Kleenex tissues” – referring
to the tissue itself as a “Kleenex” (or the
southern-US habit of referring to all sodas as “Cokes”)
is a use that threatens to make the mark generic and
thus unprotectable (like the former trademarks thermos,
aspirin and escalator). And your trademark will not
cover every use your company might possibly make of
it, only those for which it was registered.
Trademark law is much more complicated than most laypeople
think. As there are a lot of intricate issues involved
in trademark law (as in all IP law), it is most prudent
to consult an attorney who can help you with the process
of trademark search and registration.
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