Trademarking Your Product - Picking a Distinctive Name. Episode 68

The Importance of Trademarks for Your Invention

This episode is going to deviate from my usual discussions about patents. While it’s crucial to understand what aspects of your invention are patentable and the process of obtaining a patent, there are also important legal considerations beyond patents—trademarks being one of them.

Although the trademark process can be complex, it is generally not as intricate as obtaining a patent. Unlike patents, where using a registered patent attorney or agent is required if you don’t handle it yourself, any attorney can file a trademark application on your behalf. There are numerous resources and podcasts dedicated to trademarks, but since trademarks aren’t the main focus of this podcast, I’ll just cover the basics.

Picking a Trademark That Can Be Registered

When choosing a business or product name, you must ensure it is registerable, as not all trademarks can be legally protected. The first consideration is determining what category your mark falls under.

There are five categories of trademarks:

1. Generic

2. Descriptive

3. Suggestive

4. Arbitrary

5. Fanciful

Avoiding Generic and Descriptive Marks

As a general rule, you should avoid generic and descriptive marks.

A generic mark isn’t something you choose—it’s something that happens to your brand over time. For example, Aspirin used to be a brand name for the drug acetylsalicylic acid. However, people began using aspirin as a generic term for the drug, and now, in the U.S., anyone can sell acetylsalicylic acid as “aspirin” without paying licensing fees to Bayer.

Other examples of brand names that became generic include Escalator, Dry Ice, Cellophane, Thermos, and Trampoline. You don’t need to worry about your brand becoming generic until you’ve built significant market recognition. But once that happens, you’ll need to actively fight against it.

A descriptive mark is also problematic. Let’s say you invent a sunroof with a built-in air conditioner and decide to name it The Air-Conditioned Sunroof. You likely won’t be able to register that trademark because purely descriptive names are difficult to protect.

Although there is a long and complex process to prove that a descriptive name is exclusively associated with your product (called acquired distinctiveness or secondary meaning), it can take years. It’s better to avoid this route altogether.

For example, if you own an ice cream company, don’t call it Best Ice Cream, and if you own a wine company, don’t call it Delicious Wine. You can use these names, but competitors can do the same, and you’ll have little legal protection.

Suggestive Marks – A Stronger Alternative

The next level up is a suggestive mark. There isn’t always a clear distinction between suggestive and descriptive marks, which is why legal advice can be useful if your application is rejected.

A good example is Microsoft. The name suggests software for microcomputers but does not directly describe the product. If you had never heard of Microsoft before and someone told you the name, you might guess it relates to software and computers, but it wouldn’t be immediately obvious.

Other examples of suggestive trademarks include:

• Blu-ray: Before Blu-ray discs existed, the term might have suggested something related to blue light, but it didn’t explicitly describe a blue laser reading a storage disc.

• Chicken of the Sea: This name suggests seafood (like tuna) without directly stating it.

Suggestive marks are beneficial because they hint at the nature of the product while still being distinctive.

Arbitrary Marks – Even Stronger Protection

An arbitrary mark consists of real words that have no logical connection to the product or service they represent. The classic example is Apple. The word apple has nothing to do with computers, so when Apple Computers first launched, the name didn’t give any clues about the company’s products.

However, if an apple farming company named itself “Apple,” that would be descriptive and not protectable. The same principle applies to Camel cigarettes—camels have no inherent connection to tobacco, making the brand name arbitrary.

Because arbitrary marks have no inherent meaning in their industry, they are easier to protect.

Fanciful Marks – The Strongest Category

The strongest trademarks are fanciful marks, which are completely made-up words. Examples include:

• Kodak

• Kinko’s

These words had no meaning before they were created as trademarks. Because they are unique, it is difficult for someone else to claim they accidentally came up with the same name.

The advantage of fanciful and arbitrary marks is that they offer the strongest legal protection. If a competitor uses a similar name, it’s easier to argue infringement. However, the downside is that consumers may not immediately understand what your business or product does, whereas a suggestive mark can help convey meaning.

Other Factors to Consider When Choosing a Name

When picking a trademark, there are additional considerations:

Avoid Surnames in Descriptive Marks

If your business name is too descriptive and includes a common surname, it may be difficult to protect. For example, if you open an ice cream shop called Smith’s Ice Cream Shop, another Smith could open a similar business, and you would have little recourse.

Be Cautious with Geographic Terms

Trademarks that include geographical locations can be problematic. One issue is deceptiveness. For example, if your sparkling wine doesn’t come from the Champagne region of France, you cannot call it Champagne—this is a geographic indicator.

Similarly, a Santa Monica Surf Shop may not be a strong trademark. Since “surf shop” is descriptive and “Santa Monica” is a well-known location, others should be free to use the same name for similar businesses.

However, some brands successfully use geographic terms in a suggestive way. For instance, California Pizza Kitchen suggests a particular style of pizza rather than a specific geographic location. If a business gains significant recognition, even a geographically descriptive name can achieve secondary meaning, allowing for trademark protection.

What’s Next?

In the next episode, I’ll discuss how to search for existing trademarks to ensure your business or product name doesn’t infringe on anyone else’s rights.

Although trademarks aren’t the main focus of this podcast, I know many of you are interested in basic intellectual property protection, so I’ve included a couple of episodes on the topic. After the next episode, I’ll likely do one more covering how to file a trademark application.

I’m Adam Diament, and until next time, keep on inventing!