When selecting a brand name, it may be tempting to choose one that directly tells people what your products or services are about. Descriptive trademarks (or brand name), which instantly communicate what you do are easier to market at inception. However, choosing a descriptive trademark often is a mistake because they are not entitled to trademark protection from the get-go, whereas “fanciful” or “suggestive” trademarks are immediately protectable, as we explain below.
Fanciful or arbitrary trademarks are the easiest brand name to protect, but also the hardest to market. For instance, “Apple” does not describe or suggest anything about its computers, tablets, or watches. There is no rational connection between the brand name and the devices. Thus, it is entitled to the strongest level of trademark protection. In contrast, “First Bank”, in connection with banking services, tells us right away what the services are. Therefore, trademark protection is unavailable.
Secondary Meaning Standard
The only way around this rule – that descriptive trademarks are not protectable – is to show that customers recognize the brand name as the source of the company’s services. If the brand name has become so distinctive that it has acquired secondary meaning, it can be protected even if it is descriptive. But, proving secondary meaning is expensive and difficult. It requires meeting an exacting multi-factor standard assessing (1) the advertising budget, (2) the volume of sales, (3) the length and manner of use, (4) consumer testimonies, and (5) consumer surveys. Long story short, it is far better to stick with a fanciful or suggestive trademark. Indeed, even after having invested time and money building a brand, there is no guarantee that your mark possesses sufficient brand recognition to meet the taxing standard.
A suggestive trademark is a salutary compromise between marketing and legal considerations and has the makings of a very good trademark. This type of trademark is not as strong as fanciful marks but possess sufficient potency to conserve and harness goodwill and stop others from using the same or similar trademarks.
A suggestive mark is one that requires imagination, thought and perception to reach a conclusion as to the nature of the goods or services. For instance, “Chicken of the Sea” in connection with tuna is suggestive – some operation of the imagination is required to connect the brand name with the fish sold.
Brainstorming with a trademark attorney during the brand name selection stage is highly valuable. Striking the right balance between distinctiveness and descriptiveness is difficult, especially because the line between suggestive and descriptive trademark is notoriously blurry. Sadly, no mathematical formula has been uncovered to tell them apart. “Doing it right the first time” is a managerial accounting theory. It is also a mantra to live by. It’s so much easier and cost-efficient to do things right from scratch than to get bogged down with mistakes made on the basis of inaccurate information.
Two Final Tips
Tip 1: Make sure at least one of the words in your trademark is fanciful.
Occasionally, a descriptive word is unavoidable. In this case, it is a good idea to match a descriptive word with a fanciful one to increase chances of registration (think “Apple Computer”).
Tip2: The brand name should not be used in a descriptive way.
Even if your trademark is fanciful, you should be careful to only use the trademark in a trademark-sense (as a adjective), not as a noon or verb. More on this in this post: Pin Exclusive to Pinterest.