By Benjamin Ogara
Texas Tech University School of Law
Juris Doctor Candidate 2022
The name of a business, product, or service is one of the most important aspects of a company. This naming process can bring up legal concerns with respect to trademark law, as well as business concerns when it comes to marketing. This is in part because there are four main categories of names, each with their own legal considerations. The more generic, or basic a name is, the easier it is to convey what is being sold to customers, but the drawback is that trademark protection may not be available, or harder to acquire. Conversely, the more obscure a name is, the more difficult it will be to market, though trademark protection will likely be a lot higher and easier to obtain. In the middle of these legal and marketing concerns is a type of mark called a suggestive mark. While also one of four main categories of name types, there can be a fine line between suggestive marks and names that are merely descriptive. It is important to have a general understanding of all four of these categories and particularly the differences between a suggestive and descriptive mark. Additionally, once a name has been created it would be wise for a business to work with an attorney to conduct a proper trademark search prior to using the name or filing a trademark application. Artists and organizations in Eastern Missouri and Southwest Illinois, can get legal assistance through VLAA.
A generic name is the actual word or phrase that describes what the product or service is. Some examples of generic names include (1) the word “pen” as a name to indicate you are selling pens, (2) “tire shop” when you sell and provide services regarding tires, or (3) potato chips, when the snack you are selling is just that, potato chips. A mark can become generic over time, such as aspirin, yo-yo, and cellophane, but that is not an issue for whether it is generic at the initial naming stage. A generic mark can never receive trademark protection, so it would not be wise to use a generic name to identify and distinguish a business or product from those of others in real life. However, while the conversation regarding generic names usually ends there, a generic term might be useful for an individual creating a movie, TV show, fictional story, or video of any kind. The purpose of a product in a fictional story is simply to complete the overall setting and picture, so using generic terms like soda and milk may be all that is necessary in that case.
A descriptive mark directly describes the qualities or characteristics of the product or service. Some examples might include using (1) “3 ring” to describe a binder, (2) “hydrating” to describe bottled water, or (3) “crunchy” to describe a crunchy snack. These kinds of marks cannot initially acquire trademark protection, so it might not be a good idea to settle for a descriptive mark. This is especially true if the business or type of product or service is one that will have many other competitors, all looking for ways to describe what they offer in the clearest way. Descriptive marks are potentially more protectable than generic names however, because they can be trademarked if they acquire what is known as “secondary meaning” over time in the minds of consumers. A secondary meaning means that even though the mark was originally merely descriptive, the word or phrase has become well known as a source identifier over time, and it is common for ordinary consumers to link the mark to a particular source of the product or service. A business may want to take a risk and settle with a descriptive mark if it believes the market is small enough for the name to gain a secondary meaning before another competitor enters it. For a business owner whose goals are to just stay small and local, they might be able to open “St. Louis Donut Shop” or “John Doe’s Auto Repairs” and acquire a secondary meaning at least locally fairly soon.
A suggestive mark does not directly describe the product or service, but it alludes to what is being sold, and if the consumer applies a little thought to the name, he or she can have an idea of what it is. Some examples of well-known suggestive marks are Microsoft and Netflix. This may be a good type of mark for businesses because it does not have to acquire a secondary meaning to be eligible for a trademark protection. At the same time, it is easier for busy consumers to understand what a product or service is with a suggestive name, than it is for the next category, a fanciful or arbitrary trademark.
Fanciful or arbitrary mark
Fanciful and arbitrary marks can receive the highest level of trademark protection. A fanciful mark is one that is created afresh by the business owner, and a well-known example is Google. An arbitrary mark is not necessarily a made-up word or phrase, but the name is not related to the type of business the owner is using it for. A well-known example of an arbitrary mark is the oil company name Shell. The word “shell” is not made up, but it is arbitrary here and does not relate to the business of selling gas.
Determining when a name is suggestive and not merely descriptive.
Below are three common tests to determine whether a mark is suggestive:
- Imagination: Under the imagination test, if the name requires a consumer to use imagination to understand what the product or service is, it will likely be suggestive. And it follows that the more imagination that is needed, the more likely it will be suggestive. For example, a court found that the word “Brizzy” was suggestive as a name for a carbonated drink. A consumer has to use their imagination to realize that “Brizzy” rhymes with “fizzy” and was therefore intended as a play on words. However, a court determined “WEBSITE GADGET” does not require imagination to understand that it is simply identifying computer software.
- Competitors’ need: Under the competitors’ needs test, a name is more likely to be descriptive if there is a higher need for competitors to use the same word or phrase. This is similar to the imagination test because the more thought a consumer must put into understanding the name, the more thought a business must have also put into creating the name, making it one that is probably not necessary. For example, a court found that using “INTELLIGENT QUARTZ” in connection with selling watches was suggestive because “intelligent” is not needed to describe the quartz function of watches. On the other hand, “RESERVE CLOUD” could not pass this test because “reserve” might be needed to describe a cloud-based software application where reservations of some kind could be made.
- Competitors’ use: If competitors in the same industry frequently use a word or phrase to describe a good or service, it may be descriptive, or even a weak suggestive mark. This is important to keep in mind because although a name could be suggestive, it may be a weak one nonetheless. This brings us back to the “Brizzy” example. Even though the name was found to be suggestive, the mark was still deemed weak because the part of the word “izzy” was used by several other businesses to describe beverages.
Importance of working with an attorney to conduct a trademark search.
There are a few reasons why a business should work with a trademark attorney to conduct a name search prior to using the name or attempting to register it as a trademark.
- Avoiding trademark infringement: The importance of hiring a trademark lawyer is that they will conduct a search that is much more comprehensive than what one might be able to do using the free or low-cost options. Moreover, a trademark attorney will have experience with keyword searching to uncover more names that could be identical or similar. A lawyer will also keep the confusingly similar test in mind and know the importance of searching for different spellings of names to discover marks that are technically different, but are phonetically alike, and therefore may cause confusion.
- Avoid rebranding: If a business starts using their name before an attorney is able to conduct a proper search for them, they will have to expend money and effort going back to change their name everywhere it was used if it is later found that the mark infringes on someone else’s trademark. That would mean a waste of money on digital ad spaces, physically signs, product labels, and more. This is the likely result of trademark infringement because it will either be a court, or the accuser in a demand letter instructing the business to stop using the mark entirely. If the alleged infringer is a small business, they will probably not be able to simply offer an amount of money to keep their mark as it is and avoid the rebranding situation.
- Higher probability of trademark registration: Having anattorney conduct a search prior to registration will increase the chances of an examiner at the USPTO approving the mark. The trademark lawyer can use the search results and work with the business to submit a name that is not being used by another. This way the mark that is submitted to the USPTO will be more likely to get approved since the examiner will be doing a trademark search as well. The USPTO website says that the registration process may take between 12 and 18 months. This may feel like forever for a business, so it would be wise to have a proper search done for peace of mind, and to be able to submit a name that is in the best possible position to get approved.
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