Distinctiveness is an important aspect of the trademark process. The USPTO does not grant trademark protection to a mark that is generic or merely descriptive. This, of course, is up to the interpretation of the examining attorney, and I have seen some applications denied based on descriptiveness even though I would never have thought so.
So what can you do when trying to come up with a great and registerable business name? Stay clear of generic or merely descriptive marks.
In this article, we will examine both of those, and in in the future examine marks that are more widely accepted by the USPTO such as fanciful and arbitrary.
These marks are words that simply name a product. For example, naming your brand Computers LLC if you build computers is likely too generic to warrant trademark protection. Even if your brand gains secondary meaning to consumers, it is unlikely that you can get a trademark for a generic mark as the government is not in the business of giving monopolies to companies that use words that generically identify products.
It is important to note that word can be generic to one type of good or service and not to another. A great example of this is Apple, generic to the fruit but clearly not to electronics.
Also, validly registered marks can become generic (much to the owner’s dismay) if the public misuses the mark enough to become a generic name for the product. Aspirin was once a trademarked name that became generic to pain reliever. Marks like Kleenex and Xerox were in danger of losing their registration. Both companies have spent considerable time and money trying to change the general population’s use of the mark.
A few other fun ones to note are trampoline, thermos and app store. All now considered generic.
So, when picking your business name stay away from words or phrases that name the product or service you are providing.
Descriptive marks generally describe the characteristic of the goods or services you plan to provide. No rights are granted to merely descriptive marks. In contrast, marks that are suggestive and qualify for registration, require the consumer to use some imagination, thought, or perception to conclude what the nature of the product or service is. Consumers reach a conclusion about a descriptive mark without any such imagination or thought.
A few examples of this might be Creamy and Cold for an ice cream brand or Crystal Clear for a TV company. Neither of these marks do much more than describe the good associated with the brand and are unlikely to garner protection.
If your mark is merely descriptive, it might gain a secondary meaning to consumers, at which point it becomes eligible for registration. Secondary meaning can be gained through the long-term use of the mark or tons of advertising and publicity surrounding the mark. Sharp- a television brand, is one example of a descriptive mark gaining secondary meaning.
It’s not always easy to spot the issue:
Although it seems pretty simple on paper, the USPTO has proven time and time again that merely descriptive and even generic can be somewhat tricky for applicants. The line between suggestive (preferred), merely descriptive (not good), and generic (even worse) is a small one.
It is always best to find a mark that is fanciful or arbitrary when naming your brand or company.
Check back next week for a discussion on those types of marks, and how to determine if your name qualifies!
I hope you found this helpful! 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.