Choosing a Trademark:  Why Not be Arbitrary?

Categories: Intellectual Property and Uncategorized.

By Tom Graves

When choosing a trademark for your goods or services, you have many decisions to make:  How can I capture the attention of my customers?  How can I convey the quality of my products?  How can I help consumers make a connection between my trademark and my business?

These are all important considerations, but from a legal perspective, you should also be asking yourself the following:  How likely is it that I will be able to register my trademark?  Will another company be able to successfully challenge my trademark?  Has anyone else already used the trademark?  These legal issues can have a major impact on your bottom line, and should be addressed earlier rather than later.

Perhaps the most useful characteristic a trademark can have is that it be arbitrary or fanciful.  An arbitrary mark is one that is in common use but that has no connection with the goods or services with which it is used, except as an identifier of the source of those goods or services.  Examples of arbitrary marks include “Omega” for watches and “Apple” for computers. A fanciful mark is one that is entirely made up, meaning that it is not in common use or found in a dictionary.  Examples of fanciful marks include “Exxon” and “Kodak.”

From a legal perspective, the key feature of arbitrary and fanciful marks is that they are inherently distinctive.  This means that the owner of the mark does not need to provide evidence showing that customers associate the mark with the source of the goods or services in order to own exclusive rights to the mark.  With arbitrary and fanciful marks, this customer-source association (referred to as secondary meaning) is already presumed.

The situation is quite different with a third type of mark that is known as descriptive. Descriptive marks describe some quality, ingredient, or characteristic of the product or service.  This is seen with marks such as “Chap Stick” for skin preparation in a stick and “Holiday Inn” for motels.  When registering with the United States Patent and Trademark Office, the user of a descriptive mark must take the additional step of proving that the consuming public associates the mark with the source of the goods or services.  Otherwise the user will not be able to obtain exclusive rights to that mark.

If you choose an arbitrary or fanciful mark rather than a descriptive mark for your goods or services, your mark will have the following important advantages:

  1. When you are still in the process of finalizing your selection of a mark, it will be easier to determine if another business is already using an arbitrary or fanciful mark, as there will typically be fewer instances of the mark being used in commerce.
  2. If you plan on registering your mark with the United States Patent and Trademark Office, it will typically be less costly with an arbitrary or fanciful mark, as the additional step of proving secondary meaning is not required.
  3. Use of an arbitrary or fanciful mark is less likely to inadvertently infringe another mark, as these marks are not as commonly used in connection with the goods or services in question (and fanciful marks are, by definition, not in use at all except as trademarks).
  4. Arbitrary and fanciful marks are generally less costly to enforce, as other businesses are less likely to use the mark in connection with similar goods or services.

Although it can be difficult to come up with a mark that is arbitrary or fanciful while still conveying an appropriate message about your products to your customers, the advantages can make doing so well worth the effort.  Consult your attorney about the many specific issues involved with choosing a mark for your business.