Some names don’t receive any trademark protection and some are stronger than others. Let’s run through an example to see how this works. Imagine you want to sell pizzas and need to come up with a good name. You can call your pizza: Pizza, Best Pizza, Alaska’s Best Pizza, Suzy’s Pizza, A.J.’s Pizza, Mile Pie Pizza, Pizzatastic, Tarantula Pizza, Falling Domino Pizza, or Prazdahada Pizza. Let’s take a look at these in order:
- Pizza. This is generic. You can use this name, but anybody else can also use the name and you wont be able to register the name with the USPTO.
- Best Pizza, Alaska’s Best Pizza, Suzy’s Pizza, A.J.’s Pizza. These are all descriptive names. They merely describe the pizza’s quality, geography, or use a personal name or acronym. You most likely will not be able to register any of these names with the USPTO unless you can prove that you’ve used the name long enough to gain meaning beyond the descriptive name. (McDonald’s is a good example.) You might be able to register the name with the state of Alaska. You might also be able to stop someone else from using the name through unfair trade practices laws.
- Mile Pie Pizza, Pizzatastic. These two names are stronger than descriptive names. They are suggestive marks. They use ordinary words in a clever way to create a desirable feeling about the product. They are considered distinctive and therefore protectable. You probably can register these names with the USPTO so long as the name doesn’t cause confusion with another protected trademark. But remember, there is no guarantee that the name will be approved.
- Tarantula Pizza, Falling Domino Pizza. These names are arbitrary. You normally don’t associate tarantulas or dominos along with pizza. These names use common words used in an unexpected or arbitrary way and are legally strong marks. The USPTO will likely accept the application so long as they don’t cause confusion with another protected trademark. The applicant will still need to disclaim rights to the word Pizza in the trademark application. The name Falling Domino Pizza, however, is likely too close to the Domino’s Pizza trademark and will almost certainly be rejected because it can be easily confused with a protected registered trademark.
- Prazdahada Pizza. I made this name up. Pretty good huh? It’s a coined trademark. If this is a brand new word never used before and isn’t close to any other name in its class, then the USPTO will almost certainly approve the trademark application.
So let’s review the different levels of trademark strength from the weakest to the strongest.
These words are synonymous with the underlying product or service and can’t be distinguished from others. Names like cola, dry ice, pizza, etc. These names will never receive any protection.
These are ordinary marks. The mark says something about the product or service in a descriptive or otherwise mundane way. These names only receive protection when they become so closely identified with a specific product or service that the public no longer thinks first of the original ordinary meaning of the word (think McDonald’s). They also get protection from unfair trade practices laws. Nondistinctive marks include:
- Descriptions. These marks describe a feature or attribute of the product or services such as Best Pet Care, Superb Web Design, etc. It also includes composite words that use fragments such as web-, micro-, compu-, etc.
- Geographic names. These marks include geographic terms like West, Anchorage, Alaska, Denali, world, global or any other place identifier such as street names, regions, rivers, etc.
- Personal names. These include first name, nicknames, surnames, and initials. They’re the most popular marks used for goods and services.
Even though non-distinctive marks don’t qualify for federal registration, they can be placed on the federal supplemental register. The benefits of doing this are: it gives notice to future trademark searchers; you’re allowed to use the ® with the mark; and if the mark remains on the supplemental register for five years it makes it more likely to be placed on the principal register. (All references to federal register in this book refer to the principal register unless otherwise specified.)
If you use an ordinary word to suggest, but not outright describe an idea or feeling, the mark is considered distinctive and protectable. A good example is Roach Motel.
If you use ordinary words in an unusual context or create a fanciful association, then the mark is considered distinctive and protectable. A good example is Apple Computer. You won’t find any apples in their products. What does an apple have to do with computers? The association is fanciful.
These words are made up and mean nothing. They more than likely never existed before. The best example is Kodak. These names receive the most protection.