Arbitrary and fanciful trademarks

Arbitrary or Fanciful: Choose a Strong Mark

In Blog, Trademark 101 by Shannon MontgomeryLeave a Comment

In a recent article, I discussed the importance of not having a company name that is merely descriptive or generic

This week I want to talk about the types of marks you do want, in order to obtain trademark registration with the USPTO.

As mentioned earlier, distinctiveness gives a mark the ability to distinguish the goods or services upon which it is being used in comparison to other similar goods or services. Fanciful and arbitrary are the top two ways to show distinctiveness with suggestive falling into third place.

Fanciful:

These are the marks that are almost made up entirely for the sole purpose of being a trademark for the company or brand. These are categorically the best type of mark to have. They usually only have meaning in relation to the specific product or service they’re used for.

Great examples of a fanciful mark include Kodak, Pepsi, Coca-Cola, and Pop-Tart.

Fanciful marks are the most distinctive because they have no other meaning, and when a consumer sees or hears it, they immediately relate it to that company, brand, and product or service. Therefore, the USPTO feels it is necessary to grant them protection through registration.

Arbitrary:

The next level of protectable marks is what we call arbitrary marks. These are words with actual meanings but a meaning that is not associated with that product or service. In my last article, I gave an example of Apple for computers. An apple is a thing, but when used in relation to computers and electronics it has an arbitrary meaning worthy of trademark protection.

If you have trouble coming up with an entirely new word, choosing something in the arbitrary category will help to set you up for success in your quest for trademark registration.

Suggestive:

The final type of mark I want to discuss is known as suggestive marks. These types of marks suggest a particular quality or feature of the good or service without point blank spelling it out. Suggestive marks require some use of imagination on part of the consumer to come to a conclusion about what the mark is referring to. These are more widely used due to the marketing advantage a brand has of tying the mark to the product or service in the mind of the consumer.

The line between suggestive and descriptive marks is a thin one, as both aim to refer to the particular goods or services at issue. However, if you have to use some imagination it is likely a suggestive mark worthy of registration.

A few examples of this are Microsoft for software, and Airbus the aeronautics company. Both marks suggest the type of product but don’t directly identify it.

Research before you pick:

Whether a mark will gain registration from the USPTO can sometimes be tricky. The examining attorney may feel one way about a mark that almost no one else would agree with. Of course, there are ways to appeal decisions but the best thing your brand can do is to develop a mark that is fanciful or arbitrary and yet still marketable.

Just as you research everything your company will do, deciding on the name shouldn’t be any different.

I hope this was helpful in deciding what direction to take your company name. As always, if you have more questions on the subject please feel free to reach out to me through the contact form on my website, or find me on Instagram at MontgomeryLawPllc.

 

 

Please note that this is not meant to be legal advice for you or your situation, this is merely some legal research and knowledge on the given topic.

 

 

 

 

 

 

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