Your Trademark: Is it Protectable?
Protecting Your Interests, Business, Property & Rights
Your trademarks identify your business. They are your brand. In a way, they are your business. In order to protect your business’s trademarks, you want to ensure that the marks that you are choosing are the type that can be protected.
Not all marks are alike when it comes to the ability to federally register a trademark with the United States Patent and Trademark Office (USPTO). There is actually a defined range of protect-ability that has developed through federal case law, ranging from the un-protectable to the highly protectable.
Certain marks are flat-out un-protectable (for federal purposes). These include marks that may include immoral, deceptive, or scandalous matter, disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute. 15 U.S. Code § 1052.
Other marks may not be registerable because they have been deemed “generic.” A generic mark is a mark that includes the primary meaning of the product or service itself. For instance, “Chocolate” for a chocolate bar, would likely be deemed generic and un-registerable. The reason generic terms cannot be trademarked is because if only one producer has the rights to the word “chocolate,” other producers would have a hard time describing their chocolate for sale. Therefore, no one producer may register a term that is generic for the product or service.
Marks that are “merely descriptive” of the product/service they are used for also may be refused unless they can show “secondary meaning” through extensive use in the marketplace. A merely descriptive term could be “Fudgy” for a chocolate brownie mix, or “sweet” for a candy-cane.
Generally, marks not fitting in one of the categories described above should be registerable, if they are available. These include marks that are “suggestive,” meaning they only allude to characteristics of the product or service. For instance, “High Sky” for a flying school would be suggestive but not descriptive. Also generally registerable are “arbitrary” marks, which are marks that seem to have nothing to do with the product or service offered. For example, “Penguin” for a Book publisher. And the most highly registerable categorization is a “fanciful” mark. This is a made-up term. Examples include Expedia®, Travelocity®, and Yahoo.®
This range of distinctiveness should be at the forefront of your mind when choosing a business name, product name, or service name. If you are creating a brand that you want to be able to protect, you need to start with the right mark. Do not use generic terms, and avoid falling into the “merely descriptive” category, because there is no need to attempt to argue secondary meaning in the future, when you could choose a stronger mark from the beginning.
Trademark distinctiveness rules tend to directly contradict marketing logic for choosing a product or business name. With the emerging reliance on search engine optimization (SEO), marketers will advise you to use terms that customers will search to find your product or business. Take note of the advice, but do not go down the SEO road too far and neglect the trademark distinctiveness rules. Because if you do, you could end up with a brand that is highly searchable but un-protectable. Blending SEO and trademark distinctiveness concepts is an art, but if done well can lead you to the optimal mark that is protectable and also search friendly.
Another road block to obtaining the mark you want can be availability of the accompanying website. Most businesses these days that are starting are going to be creating a website. The availability of websites for terms that normal humans can think of is shrinking. Every day, less and less sites are available. Make sure that you secure a website that easily accompanies your business name or product/service offering, before you commit to a mark. If the mark that you want to use does not have a site that you can secure, you are likely going to want to go back to the drawing board. But do not dismay. Take solace in the knowledge that many entrepreneurs have gone through this process, and have come out on the other side with a protectable mark that they love.