The choice of a business name is a fundamental decision. A good name should be immediately recognizable. Of course, a business does not want to select a name that is already being used by someone else. This is a much easier change to make early on in starting a business or a new product line compared to months or years down the line, when the costs of rebranding are much higher. Receiving a trademark cease and desist takes valuable time, money, and energy away from business operations and a trademark attorney can assist you in clearing a proposed business name.
Many business owners also want their name to convey one or more positive aspects of their business. While this has many benefits from a business perspective, it can create problems from a trademark perspective.
There are four “levels” of trademarks, listed from strongest to weakest: fanciful, arbitrary, suggestive, and descriptive.
There is technically a fifth category that a potential trademark could be: generic. Generic terms are the common terms for the good or service. However, it is impossible to obtain trademark rights in a generic term. For example, it is impossible to obtain trademark rights in “car,” “cell phone,” or “pillow,” since those are the basic word for the product. In the interest of competition, all businesses involved in an industry need to be allowed to use the actual name of their product, so no trademark rights are allowed for the generic term.’
A fanciful trademark is one that is a completely made-up word. Famous fanciful trademarks include Rolex for watches and Verizon for cell phones. Fanciful marks are considered the strongest trademarks, because they exist only to identify your business.
An arbitrary trademark is one that is an existing word or words, but that have nothing to do with the products or services offered by the business. Famous arbitrary trademarks include Apple for computers and Amazon for delivery services. Arbitrary trademarks are considered much stronger than descriptive or suggestive marks because consumers, once exposed to the mark, will quickly associate the trademark with the business.
A suggestive trademark is one that hints at the products or services offered by the business, but does something more than simply describing them. Some examples of suggestive trademarks include Jaguar for cars (suggesting the cars are fast), Netflix (delivering ‘flicks’ over the internet), or Airbus for airplanes (a bus in the air). Suggestive trademarks are considered stronger than descriptive marks due to being more easily associated with a source of products rather than the products themselves.
Fanciful, arbitrary, and suggestive marks may be registered without further evidence of distinctiveness, assuming there is no likelihood of confusion with another existing mark.
A descriptive trademark is one that describes the products or services offered by the business. Descriptive trademarks may also include adjectives, owner names, or geographic indicators. Descriptive trademarks are considered relatively weaker compared to other marks, because they describe the products rather than identify the source of the products. Because of this, a business that selects a descriptive mark may have difficulties registering a descriptive business name with the USPTO.
As a famous example, an NFL team was denied registration for “Washington Football Team,” because the name simply described what the football club was. The line between suggestive and descriptive is highly subjective. A federal court of appeals found that 5-Hour Energy was suggestive rather than descriptive, but the decision could have gone the other way in front of a different court or the USPTO. Descriptiveness arguments are frequent sources of office actions denying registration, and our team has extensive experience in addressing these issues.
While descriptive business names may be less ideal from a trademark perspective, many business owners still elect to use a descriptive name for the marketing benefits. “Orlando’s Best Lawyers” might be a great marketing tool, but would be a poor choice of trademark because it is highly descriptive. There is a balance between these interests and our intellectual property attorneys are highly experienced in helping businesses select and register marks to protect their brand.
