Choosing the right brand name

Related Practice Area: Technology & IP Transactions
Tags: Trademark, EUIPO, WIPO

Strength of Trademarks

A trademark is what makes one item or service distinguishable from another and in order for it to be effective, it usually has to be distinct from other marks and must have a quality which makes it stand apart. So true is the latter point, that a word, logo, or indeed symbol will only be considered for trademark purposes if it is distinct. The distinctiveness of a logo or trademark generally falls into one of five categories which range from the fanciful to the generic. Symbols or devices which fall under the first three of the five categories namely: fanciful, arbitrary, and suggestive are considered to have the ability to function as trademarks. However, if a logo or symbol is merely descriptive, it can only function as a trademark or service if it obtains a secondary meaning; generic logos can never be considered to be trademarkable thanks to the fact that they have nothing which is unique or specific to differentiate them from the whole.

It is the inherent nature of a mark, particularly where it falls in the above five categories which will dictate how well it will perform in a given market and the length and the breadth of the legal protection to which it can lay claim to. Thus, fanciful marks are considered to be stronger than suggestive marks and will be given a higher level of protection by courts.

Fanciful Marks

Fanciful marks are the strongest marks in the trademark spectrum and in fact, they are marks that have been created solely for the purpose of being trademarked. Thus, fanciful marks do not usually have a known meaning in language; XEROX and KODAK are renowned examples of such marks. Due to the fact that these words don’t usually have an inherent meaning, the public usually needs to be educated through adverts as to what the word represents and what to associate it with. It is thanks to this uniqueness that this type of trademark is usually afforded the greatest protection against unauthorized use.

Arbitrary Marks

An arbitrary trademark has the distinguishing feature of using words or symbols which are already in common use in relation to objects which one would not usually associate with the particular word or symbol being given. Arbitrary marks that everyone has become familiar with include APPLE computers and CAMEL cigarettes. Of course, due to the fact that people would never think to associate an APPLE with a computer, the public needs to be educated with regards to the link. Due to this fact, arbitrary marks are also given a lot of importance by trademarking authorities and courts of law.

Suggestive Marks

With suggestive marks, it really is all in the name. Suggestive marks suggest a quality or characteristic which the goods or services will offer. Despite the fact that suggestive marks are less strong than fanciful and arbitrary marks, they are more widely used than the former as people take advantage of the link which already exists in the public’s mind and does not have to go to the trouble of educating or coming up with new-fangled concepts. That said, the fact that so little imagination and work is put into coming up with a suggestive mark makes it very hard for them to be protected by law.

Descriptive Marks

Trademark rights are not usually granted to descriptive marks as all they do is literally describe the services or goods being used. An example of a descriptive mark would be SOFT AND FLAKY for a croissant. Merely describing the properties of a product or service is particularly hard to be trademarked due to the fact that there is no original thought in the matter. That said, it is possible for distinctive marks to actually become distinctive by achieving secondary meaning. This secondary meaning can show that the public is able to recognize the mark as having a source that indicates function. It is only once the second meaning has been achieved and acknowledged by the consumer that a protectable trademark can be developed which can take time as well as large amounts of advertising and publicity. Examples of descriptive marks that achieved secondary and universal meaning are brands such as SHARP for televisions; a descriptive word in common use turned representative of a whole can now be protected by trademark law.

Generic Marks

Generic marks can never become trademarked because they are umbrella terms used to describe the whole and hence, have no bearing in the strength of the trademarks arena. No company will be able to trademark or exclusively use words that generically identify a product – an example of this is a SMARTPHONE. An opposing effect to this can also be created if a trademark name becomes so widely used by the public that it becomes representative of the product itself. Examples of former trademarks that are now in mainstream or generic use are BIRO to describe pens and CUTEX to describe nail varnish.

The Importance of Choosing a Strong Trademark

When choosing how to represent yourself or your own company, you should always ensure to choose something as direct and as distinctive as possible. This will not only ensure that you are given maximum protection by the law, but it will also make your service that much more memorable for the consumer.

Author:  Alain Muscat
The information provided on this website is intended to convey general information only and does not, and is not intended to, constitute legal advice. Should you wish to obtain further information and advice on this subject we invite you to get in touch with one of our practitioners.


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