So, you want to start a business. Or maybe you’ve already started a business and things are going well, but you’re concerned about protecting your business’s name and all the clientele you’ve built up using it. So what do you do? Register for trademark protection! Sounds easy, right? Well, not so fast. There are numerous issues to be considered before filing a trademark registration. Not every business name can be protected, and unfortunately, many uninformed individuals waste hundreds of dollars to learn this disappointing truth.
Trademark Law in the U.S. can be very complicated. There are two different types of marks: trademarks and servicemarks. Trademarks relate to the sale of goods, while servicemarks relate to the provision of services. To avoid any confusion, we will refer to both trademarks and servicemarks interchangeably as “trademarks” and sometimes just “marks.” Often, new businesses trying to establish themselves in a market can run into unforeseen legal complications by not using caution in choosing their name. One of the most common pitfalls these young companies fall into, is that the name they choose ends up being labeled as a “generic” or “descriptive” mark by the court. If a judge rules that a mark is “generic,” then the “owner” of the mark has no rights in the mark. This brings up an obvious question: “What is a generic or descriptive mark and how do I avoid choosing one?”
Generic marks are marks that are synonymous with the name of the good being sold or service provided. Imagine branding a laptop computer “Laptop” or branding your homegrown apples “Apples.” A court would never in any circumstance grant trademark protection for these names. Can you put a sign next to your truck full of apples that says “Apples” and sell apples? Of course – but if someone else did the same thing, they wouldn’t be violating your rights in the mark “Apple” because “Apple” is too generic and cannot be protected.
Similarly, marks which are “merely descriptive” of the goods or services provided are not typically granted legal protection. A descriptive trademark is one that describes what the product is. For example, if a television company tried to trademark the color televisions they sell with the name “Ultra-wide Displays” or a nail salon attempting to trademark the name “Best Care Nails,” such names (i.e. marks) would be ruled descriptive.
So why prevent hard-working business owners from having legal rights in their business’s name? This is partly because courts don’t want the English language to be appropriated by business owners. Trademark Law exists mostly to protect consumers, not business owners, but business owners can nevertheless acquire trademark rights – if they know the law. 
So how does a business best avoid selecting a name or logo that’s generic or descriptive? The easiest answer is to consult a lawyer who practices trademark law. The more complex answer is to choose a name to describe the goods sold or services provided that would be considered suggestive, arbitrary, or fanciful.
Suggestive marks are those which imply what the good or service may be. A good example of a suggestive mark is “Coppertone” (sunscreen). Note that the word “sunscreen” or “sunblock” would be generic, while the phrase “Sunlight Protective Skin Lotion” would be descriptive. “Coppertone” is suggestive, because it relates to an effect the product can produce rather than describing the product itself, i.e. that the product can help give your skin a copper-colored tone. If the line between generic, descriptive, and suggestive marks seems blurry, well, that’s because it is. Within the spectrum of different types of trademarks, it’s all a matter of degree. Enter “Arbitrary” and “Fanciful” marks:
Arbitrary marks are those in which the mark has no bearing on the product being sold. They are typically ordinary words applied in unrelated context. A good example of an arbitrary mark is “Apple Computers.” Apples and computers are totally unrelated goods, so selling a computer under the name “Apple” is very different than selling apples under the name “Apple.” In the case of the Macintosh Computer, “Apple” is neither descriptive nor suggestive. Rather, it is an arbitrary designation of an ordinary word used in conjunction with the sale of a product.
Fanciful marks up the ante and are neither ordinary words nor descriptive or suggestive of the good or service they relate to. Examples of arbitrary marks include “Kodak” and “Adidas.” The words “Kodak” and “Adidas” didn’t exist until their respective business owners created them for the purpose of doing business. Since they were made up words, they couldn’t possibly be generic, descriptive, or suggestive of anything. The upside to this approach as that these words result in strong trademark protection on the front end. The downside is that to some degree it makes good business sense to use a name a customer will naturally associate with the type of goods or services your business provides.
The Tran Law Firm assists clients with name selection and trademark registration. Before you commit yourself to a particular name, please consult a trademark attorney! I’ve had to tell clients who have been in business for many years that their business name was devoid of trademark protection. Save yourself some trouble and do it right the first time! Our firm is ready to help you