What’s in a Name? Choosing and Protecting a Strong Mark

written by: Polly Heseman
www.floridasmallbusinesslaw.com

Selecting a name for a new product or service is an important endeavor. A trademark or service mark is a term used to identify and indicate the source of a product or service. You want the mark to be something your targeted consumers will remember so that the product or service becomes associated with your business. A properly selected and used trademark or service mark will become a valuable corporate asset in which you will acquire the right to exclude other from competing with you by using the same or similar mark.
There are several ways you can acquire trademark and service mark rights. Trademark common law rights are acquired by marking products with the mark and selling them. Service mark rights are acquired by using a mark in association with a service and selling that service. The first to use a particular mark has superior rights to the mark and no one else can adopt the mark in the protected geographical area without infringing the trademark or service mark rights. Common law rights extend to the geographical area where the mark is used and therefore vary. State registrations extend protection to the entire state where the registration is filed whether or not the mark is used throughout the state. Federal registrations extend protection to the entire United States. However, the marked product or service must be used in more than one state to get a Federal registration.
Selecting a strong, protectable trademark or service mark can be counter-intuitive. Many businesses tend to select names that readily describe their product or service so that the consumers know immediately what they are getting. However, these are the weakest and least protectable trademarks or service marks. A mark must be distinctive in order to be protected by either common law rights or state or Federal registration. Under trademark law, terms used as trademarks and service marks are divided into five categories increasing in distinctiveness; a) generic; b) descriptive; c) suggestive; d) arbitrary; and e) fanciful. In general, only suggestive, arbitrary and fanciful marks can be registered with the state or on the Principal Register of the United States Patent and Trademark Office. Descriptive marks can be placed on the Supplemental Register in the United States Patent and Trademark Office, but rarely acquire distinctiveness because there is no exclusive use of the mark. Generic marks are never protectable.
A generic mark is the actual name of the product or service. In other words, “it is what it is.” If you have a used car lot and hang a sign that says “Used Cars,” it is not protectable and you would have no trademark rights in the name even if you were the only used car lot in the United States. A descriptive mark, on the other hand, "immediately conveys" the ingredients, qualities, or characteristics of the goods or services with which it is used. For example, “The Best Donut Shop in Boca” describes a good donut shop in Boca Raton. You would not be able to stop someone from opening a donut shop next door with the same name. So, while it is tempting to choose such a name, it is not necessarily wise.
The next three categories are protectable at common law and can be registered with a state or the United States Patent and Trademark Office. A suggestive term requires some imagination, thought, or perception to determine the nature of the goods or services from the term. The mark “Silver Spoon” for a restaurant suggests that the restaurant is refined and sophisticated. Arbitrary marks are commonly used words which have no connection to the product or service. For example, “Apple” for computers and “Camel” for cigarettes are arbitrary marks. The strongest marks, however, are fanciful. Fanciful marks are made up terms for the specific purpose of using them as trademarks or service marks. For example, “Google” for an Internet search engine and “Kleenex” for facial tissues are fanciful mark. Once there is wide spread use of a fanciful mark, it creates a stronger connection between the source of the product or service and the mark.
Once you have selected a strong, protectable, mark, it is important to determine if the mark is available prior to investing time and financial resources in using the mark. This requires an in depth search and should be conducted by an attorney experienced in trademark law. It is important to understand the extent and enforceability of your rights ahead of time. Then, you need to determine the best protection for how, and the extent to which, you will be using the mark. Again, an experienced trademark attorney can counsel you on what protection is available to you. So, now that you have the trademark basics, get creative and get on your mark!