Basic Guidelines for Selecting a New Trademark

Although there are many factors that go into selecting a new mark for use in connection with goods and services, the following guidelines are offered to help educate business owners about some basic trademark principles relating to the development of strong rights in a mark.

 

Categories of Marks: When evaluating proposed marks, it is important to understand the various categories of terms that may, and those that may not, be used as a mark. These categories are generic (terms needed by all competitors in a market to describe their goods/services – not eligible for trademark protection), descriptive (terms that specifically describe a characteristic of the product/service – may be protected with proof of secondary meaning and tend to be the weakest), suggestive (terms that require imagination to match it with a characteristic of the goods/services – may be protected but tend to be weak marks), and arbitrary (terms that do not describe or suggest any characteristic of the goods/services – may be protected and tend to be stronger marks) or fanciful (coined or “made-up” terms with no dictionary meaning – may be protected and tend to be the strongest marks). Here are a few examples in each category:

 

Generic

“Consumer Electronics” for a magazine title

“Gold Card” for credit card services

“Super Glue” for strong-bonding, rapid-setting glue

“Surgicenter” for surgical center

 

Descriptive

“Jet” for spray nozzle

“Baby Brie” for mini-size brie cheese

“Quik Print” for fast printing and duplicating services

“Tender Vittles” for cat food

 

Suggestive

“Citibank” for banking services

“Spray ‘n Vac” for aerosol rug cleaner

“Contact” for self-adhesive paper

“Habitat” for home furnishings

 

Arbitrary

“Camels” for cigarettes

“Ivory” for soap

“Horizon” for banking services

“Jellibeans” for a roller-skating rink

 

Fanciful

“Exxon” for gasoline

“Kodak” for cameras and film

“Rolex” for watches

 

Secondary Meaning

Secondary meaning attaches to a mark when the purchasers of a particular good/service associate a descriptive mark with one source. For example, “Extra Strength Pain Reliever” is descriptive in nature.  Its primary meaning is just what it says – a strong pain reliever. However, over time purchasers have learned and now tend to associate this phrase with the Excedrin product made by Bristol-Myers. This is the “secondary meaning” attributed to the mark “Extra Strength Pain Reliever.”

 

DISCLAIMER: These guidelines are intended to briefly introduce the reader to some basic trademark concepts that bear on the selection of a new mark. The reader should not rely solely upon these guidelines to decide whether to adopt a mark as a trademark, and should always seek competent legal advice before acting on these guidelines.

 

Source: Examples of marks falling within the above categories were selected from Trademark Law, A Practioner's Guide, Third Edition by Siegrun D. Kane (Practicing Law Institute, 2000)