Iowa Intellectual Property Blog
Selecting a strong trademark
Oct. 16, 2012 – Janet E. Phipps Burkhead, Iowa Intellectual Property Blog
Selecting a trademark can be difficult. You’ll want to select a strong mark which conveys to the consuming public that the goods or services that you offer come from your company and not from a competing company. Too often, a company wants to select a mark which describes the good or service offered by the company; however, these types of marks are rarely strong and present challenges to federal registration of the mark with the United States Patent and Trademark Office.
There are four classifications of trademarks and associated strength. The stronger the mark, the greater protection is afforded the mark.
Fanciful marks are the strongest and are afforded the strongest protection. A fanciful mark is a made-up word that only functions as a trademark or service mark. Since the term is a made-up term, consumers are more likely to associate these new terms with your company. Some well-known fanciful marks include XEROX, POLAROID, REEBOK, EXXON, and GOOGLE.
Arbitrary marks are real words which have no relationship to the good or service. The pairing of the word with a particular good or service is random. Again, these types of marks are afforded strong protection. Some well-known arbitrary marks include APPLE for computers, IVORY for bar soap, BEEFEATER for gin, and JAGUAR for a car.
Suggestive marks ‘suggest’ rather than describe a feature or characteristic of the good or service. These marks require thought, imagination and perception to reach a conclusion about the good or service to which it applies. Some well-known suggestive marks are COPPERTONE for suntan products, GREYHOUND for bus services, CHICKEN OF THE SEA for tuna, and LIQUID PAPER for correction fluid.
Descriptive marks describe a characteristic, ingredient, quality, feature, or purpose of the good or service. These marks are not afforded a great deal of protection unless they acquire distinctiveness through secondary meaning. Secondary meaning may be acquired through long-term use and a showing of a considerable amount of money or marketing of the good or service in conjunction with the descriptive mark. Some well-known descriptive marks that have attained federal registration are BUFFERIN for analgesics, COMPUTERLAND for maintenance and repair of computers, NATURE’S MEDICINE for nutritional and dietary supplements, and WORLD BOOK for books.
The selection of your mark is just one step in the process of using and seeking registration of your mark. However, this is an important step in creating a valuable asset and establishing goodwill for your company. If you have any questions about this process, please contact Janet Phipps Burkhead at 515-246-4531.