Can Your Name Even Be Trademarked?

Most people pick their business name because it means something to them, it feels right, or it explains what they do. 

But whether they could even trademark the name was not a consideration. And that’s totally normal.

 It’s something you wouldn’t even think of unless you knew otherwise. Yet it matters more than you think.

That’s why, when picking a business name, or any other trademark, one of the most important considerations is its “strength” as a trademark.

What Makes a Strong Trademark?

A trademark’s “strength” refers to its ability to identify the provider of goods and services. The ability to serve as a source identifier is incredibly important because this is one of the goals of trademark law, if not the main goal.

A trademark’s strength depends on whether it is primarily a source identifier or if it just describes or identifies the good or service being sold.

The more a trademark describes the goods or services being sold the weaker it is. The weaker a trademark is, the harder it is to register.

This is because describing or identifying the goods does not help identify the provider of the goods or services.

Also, the name or qualities of a product are true no matter who provides them, so everyone should be able to use those terms.

Weak Trademark Examples

For example, ice cream is called “ice cream,” so no one should be able to stop competitors from calling their ice cream “ice cream.”

Also, ice cream is cold no matter who sells it, so no one should be able to stop competitors from saying their ice cream is cold.

That’s why you would not be able to get a trademark for the words “ice cream” or “cold” if you sell ice cream.

Strong Trademark Examples

The opposite is also true. The less a trademark describes or identifies the goods or services being sold, the stronger it will be.

This is because there is no existing connection between the trademark and the goods or services in the marketplace.

You create the connection by using the trademark in your business.

Trademark law exists to reward the effort you put into making that connection.

For example, the word “apple” has been used to refer to fruit since the Middle Ages.

Nowadays, the word “apple” still refers to the fruit, but it also refers to Apple Inc., the technology company.

Apple Inc. was able to trademark the word “apple” because it did not mean anything in the context of technology before Apple Inc. started using the name.

What is the Trademark Distinctiveness Spectrum?

The ability to clearly identify the source of the goods or services is called “distinctiveness.”

Discussions about trademark strength refer to “the spectrum of distinctiveness.” The spectrum of distinctiveness is a framework to assess whether a trademark is strong or weak.

There are five levels of distinctiveness: fanciful, arbitrary, suggestive, descriptive, and generic.

What Are Fanciful Trademarks?

Fanciful trademarks are made-up words with no prior meaning.

The word literally did not exist until the business started using it.

Because there was no existing link between the trademark and the goods or services being sold, competitors have no need to use the term.

Fanciful trademarks are strong and receive the most protection in court.

Examples of fanciful trademarks include:

What Are Arbitrary Trademarks?

Arbitrary marks are existing words with no prior meaning when referring to the goods or services the business is selling.

Like fanciful marks, arbitrary marks are considered strong and receive legal protection because there was no existing link between the trademark and the goods or services being sold when the trademark started being used.

Examples of arbitrary trademarks include:

What Are Suggestive Trademarks?

Suggestive marks use existing words to “suggest” a quality or feature of the goods or services being sold instead of describing them directly. Consumers must use their imagination to see the connection between the two.

Suggestive trademarks are considered strong, but the amount of protection depends on how easy it is to make the connection between the name and the goods or services sold. The easier it is, the less protection received.

Examples of suggestive trademarks include:

What Are Descriptive Trademarks?

Descriptive trademarks directly describe a feature, quality, characteristic, function, or ingredient of the goods or services.

Because they do not meaningfully identify who is providing the goods or services, descriptive trademarks cannot be registered without acquiring distinctiveness.

Acquiring distinctiveness is a process where through long, exclusive, continuous use, as well as significant spending on advertising and consumer surveys, the trademark user can prove to the United States Patent & Trademark Office that consumers only think of their brand when they see the descriptive trademark.

Examples of descriptive marks include:

Whare Are Generic Terms?

Generic terms are the common names of a product or service.

Generic terms cannot be registered as a trademark because no one should be stopped from using the everyday name of goods or services they sell.

What Should I Name My Business?

When picking a name for your business, remember that not all names are trademarkable.

To that end, you should pick a name that is fanciful, arbitrary, or suggestive.

A name in one of these categories will receive the most protection as quickly as possible.

Key Takeaways

Not all business names can be trademarked.

If you want to immediately trademark a name, it must be fanciful, arbitrary, or suggestive.

• A fanciful trademark is a made-up word.

• An arbitrary trademark is an existing word with no connection to the goods or services being sold.

• A suggestive trademark uses existing words to suggest something about the goods or services being sold.

Names that directly describe or use the everyday name of the goods or services being sold cannot be registered without significant investments of time and money, if at all.