Considerations in Selecting a New Special Product Trade Mark


Let us assume that none of your existing trademarks will serve your purpose.  There are roughly three types of trademarks to choose from:  meaningless, suggestive, descriptive.


Meaningless Trade Marks


These are arbitrary mark which, initially at least, connote nothing about the product of its use.  Known as “strong” trademarks, they are the most easily protectable and registrable of all. In this group are (a) coined words like Kodak, Exxon, Qwip, Qux, Qiana, or deratives from coined words such as Kodachrome;  (b) common words in the English language, like Sunbean for appliances, Pioneer for stereo components and Shell for gasoline;  (c)  numbers such as 4711 on cologne and 76 on gasoline; (d) letters such as RCA, IBM, and the IH and GE monograms;  (e) characters and picture marks like the Green Giant and Pillsbury Doughboy;  (f) literary, classical or foreign language terms such as Shakespeare for fishing reels, Odyssey for electronic games, and Omega for watches; and (g) puns like Sir Real for an avant garde clothing store and Lawrence of Oregano for a restaurant.


Suggestive TradeMarks


These are likely to be more appealing to the customer, more easily remembered and therefore easier to promote.  This type of trademark enjoys much of the broad legal protection afforded the meaningless trademark, while filling the needs of the advertising staff for an association which facilitates promotion.  Such marks suggest, but do not describe, characteristics or properties of the products.  For example, Talon for slide fasteners suggests strength in gripping and holding, while Ivory for soap brings to mind delicate whiteness.  Fuzzbuster for radar detectors suggests that you will not be arrested for speeding, and London Fog, which connotes protection on a damp day, is an excellent suggestive trademark for a raincoat.


There are risks in adopting such a mark, but many think the advantages outweigh them.  Since words or symbols that are descriptive of a product are open to all to use, the problem is how to be sure that the trademark you select is suggestive and not descriptive.  Unfortunately, you can never be sure until a court has decided.  If a court should hold that your mark is descriptive, all is not lost if you can subsequently show that by extensive advertising and sales the trade and public have come to regard the terms as an indication that the goods come from a single source.  This association is called “secondary meaning” Coppertone, for example, was initially held to be descriptive of a suntan preparation, by the ruling was reversed on appeal.


Descriptive Trade Marks


These marks are descriptive of the product, the name of the owner or the place where the product originates.  Generally, a descriptive term, one which characterizes the product, its uses, its functions or its characteristics, is available for all to use in a descriptive sense.  This type of term, which is initially non-distinctive, can only become a trademark after you have used it for an indeterminate period of time and the trade and public have come to associate it with your business. For example, the primary meaning of Nu-Enamel on paint or enamel is “new enamel”, yet Nu-Enamel was held to have acquired a secondary meaning indicating a product coming from a single source.  And any descriptive meaning of Eveready for batteries and related products was dispelled by ample evidence of secondary meaning.


The courts are in general sympathetic to permitting the use of a personal name in business, although no one has an absolute right to use his own name in his business.  The trademark rights of a prior user of the same name (Ford, Hertz) are frequently held paramount, since the public has a right to be free from confusion.  In general, an individual has a right to use his own name in his business fairly and in good faith, otherwise than as a trademark or service mark.  Disputes as to what constitutes fair, good faith use, are what makes lawsuits.  Thus, using your personal name as a trademark may lead to potential legal problems with others having the same name.


Adoption of a personal name is also an invitation to the unscrupulous person with the same name to embark upon the same or a similar business as soon as you have made it commercially attractive.  He may well attempt to reap the benefits of your blood, sweat, and tears without the expenditure of a dime.  In recent years the popularity of choosing the personal name of the owner and founder as the symbol of origin has fallen off sharply so that the selection today of such trademarks is the exception rather than the rule.  There are, however, many personal-name trademarks functioning today, but their inception dates back many years:  Gillette razor blades, Wrigley’s chewing gum, Cross pens.


Geographic terms are also problematic, since companies in the named location have a right to describe the geographic origin of their products fairly and in good faith.  Still, such terms (such as Atlantic for publications or Philadelphia for cream cheese) may attain secondary meaning and be protectable against non-descriptive trademark use.  However, a geographical name, arbitrarily used, must not be deceptive as to the geographical origin of the goods.  Since Paris is famous for perfumes, it would be deceptive to select Maid in Paris (phonetically “made in Paris”) as a mark for perfume made in South Africa.