Since becoming a member of The Lab Miami, our law firm has met with entrepreneurs with sharp ideas and interesting business names. Many of these new businesses have registered their names and logos with the USPTO, while
others are still searching for the right name for their business. Picking a name that merits trademark protection is as important as picking a name that is significant to your brand and customer base. Under trademark law, the stronger the name, the greater the likelihood of getting the trademark registered. Here is how the law determines the strength of a mark:
Is your mark distinctive? “A distinctive mark has the tendency to identify the goods sold as emanating from a particular, though possible anonymous source.” A distinctive mark is protectable as long as it meets other requirements within Section 45 of the Lanham Act (please reference this law for other requirements). A spectrum of “distinctiveness” exists that helps entrepreneurs and lawyers analyze whether a mark is protectable:
1) Arbitrary or Fanciful marks. Such marks are inherently distinctive. An example of an arbitrary mark is Apple. It is arbitrary because the term “Apple” is a word in common use that is disconnected to the computers and software it is attached to. Accenture is a fanciful mark because it is an invented word not present in the dictionary that is used to describe a management consulting company. Both of these
marks are the strongest types and merit trademark protection.
2) Suggestive marks. Such marks are also inherently distinctive but may require a little more analysis. For example, Tide for laundry detergent is a suggestive mark because it makes you think about oceans suds in reference to soap and washing clothing. It requires the use of your imagination to determine what the product might be.
3) Descriptive marks. Such marks are protectable once the public recognizes the mark as an indication of a source. This means that descriptive marks must acquire a secondary
meaning before they become protectable. Descriptive marks require no imagination because they usually describe some attribute or ingredient of the product. For example Car2Go may have started as a descriptive mark that over time will or has acquired secondary meaning. Here, the name describes the service as being an easy alternative to renting our buying a car.
4) Generic marks. Such marks are ineligible for trademark protection because they can never acquire a secondary meaning. For example “Café” for a coffee shop, or “Sofa” for a furniture store. These are terms that cannot be used to deprive competitors from the right to call the item by its name.
The government rewards you when you make the effort of selecting a creative name that complies with Trademark law. Speak to our Loigica attorneys to help you in your search for strong marks.
