Developing Strong Trademarkable Brands

In today’s economy, trademarks are a valuable business asset which can be leveraged to maintain strong consumer awareness within the marketplace. However, not all trademarks are created equal. The stronger marks include marks which are arbitrary, fanciful and distinctive. These marks can be broadly protected. The weakest and least-protected marks are personal names, descriptive terms, and generic words. Distinctive business names usually receive protection under federal and state trademark law. Common or ordinary names usually do not receive protection under federal and state trademark law.

Fundamental Requirements of a Trademark

Under the Lanham Act, a trademark must meet three fundamental requirements:

It must consist of a word, name, symbol, device or any combination thereof, or any other kind of designation which the courts or the Patent and Trademark Office have found to qualify as a valid trademark

It must be adopted and used by a manufacturer or merchant or qualify for intent to use treatment.

It must identify the manufacturer’s or merchant’s goods and distinguish them from those manufactured or sold by others.
Personal Names

Personal names are names that consumers commonly associate as the name of an individual, such as Smith’s Store. The use of ”name” in the Lanham Act does not mean that all names are considered valid, registrable trademarks. For example, personal names, surnames, and generic names are frequently unprotectible, and are not considered trademarks subject to registration under the Act. There is no paramount right to use a surname in business where it is likely to be confused with a name that has already acquired source indicating significance. When a surname has become strongly connected in the public mind with a certain product and a latecomer bearing the surname attempts to use the name in selling a competing product, the courts will sometimes allow the latecomer use of the name so long as it is accompanied by a prefix, suffix or disclaimer designed to allow the public to distinguish between sources. As with descriptive marks, a surname is registrable and protectable if secondary meaning is shown so that it is no longer primarily merely a surname. A trademark is “primarily a surname” if the public would recognize it first as a surname, or if it consists of a surname and other material that is not registrable. Once a personal name is registrable and protectable, others cannot use the mark on confusingly similar goods, even if they have the same name.

Descriptive Terms

These are words that simply describe the qualities, characteristics, functions or geographic origin of a good or service, such as Car Repair Shop. No trademark rights are granted to merely descriptive marks. However, it is possible for descriptive marks to become distinctive by achieving secondary meaning. Secondary meaning indicates that although the mark is on its face descriptive of the goods or services, consumers recognize the mark as having a source indicating function. Once it can be shown that a descriptive term or phrase has achieved a second meaning then a protectable trademark is developed. Secondary meaning can be achieved through long term use or large amounts of advertising and publicity.

Generic Words

Generic words are words that are associated with a good or service in general, without identification of any particular source of the product or service, such as aspirin. Generic words receive no trademark protection. Generic “marks” are devices which actually name a product and are incapable of functioning as a trademark. Unlike descriptive marks, generic devices will not become a trademark even if they are advertised so heavily that secondary meaning can be proven in the mind of consumers. The rationale for creating the category of generic marks is that no manufacturer or service provider should be given exclusive right to use words that generically identify a product. A valid trademark can become generic if the consuming public misuses the mark causing the mark to become the generic name for the product.