SOURCES FOR COINED TRADEMARKS
So much has been written on the coinage of trademarks like Exxon and Kodak that the subject has been reduced to something approximating an exact science. Name-finder wheels give you all the possible alphabetical combinations of any desired length, three letters and up. But computers today provide much greater depth and capacity for providing lists of random, coined trademarks. From the same sources you can also learn which combinations are most pleasing to the ear, those that might be easily remembered, etc. whether it is possible to choose a combination which by appearance and sound might convey some sensation or mood, like background music in a movie, is a matter of conjecture.
Presumably, telescoping of words into acronyms produced such trademarks as Span (spiced ham) and Nair (no hair, for a depilatory). Nabisco and Avco are also telescoping of company names, i.e. National Biscuit Company and The Aviation Corporation.
There are some marks that are worth a special word of caution because of their particular problems.
Grade and Style Marks
Numerals, words or other symbols which differentiate between various grades, sizes, or styles of products fall into the same category as descriptive terms. Since they do not function primarily to distinguish, they ordinarily are not protectable as trademarks without proof of secondary meaning. In one case, various sizes of electrical connectors were described as 71, 72, 73, 74 and 76, but the court found the numerals protectable trademarks since they had come to designate the manufacturer.
The problem of adopting grade designations, hoping to protect them as trademarks, is obvious. Providing secondary meaning in court is risky business at best, and it may not be possible to prevent a competitor from using the same designations. The best approach for certain kinds of products may be to differentiate by suing clearly generic terms or symbols, and not attempt to protect them. Some model or style designations, though, may also function as trademarks, as do Monte Carlo, Impala and Malibu, designations of models of Chevrolet automobiles.
This type of mark could be called another example of the “have-your-cake-and-eat-it-too” philosophy. MFP, for example, is a trademark designating the active ingredient sodium monofluorophoshate in Colgate toothpaste. The problem here is the same as with grade marks. It is all a question of fact. If the trademark serves two purposes, it still may be valid, but if it is more the name of an ingredient than an indication of origin, you may be headed for trouble.
Trademarks in Common Use
Laudatory terms such as Supreme, Superior, Blue Ribbon, Premium, Gold Medal, and other frequently used, i.e., National, American, International, Eagle, Generals, are weak marks. These terms are used on so many different items and by so many different companies that their distinctiveness (capacity to indicate source of products) has been largely dissipated. The scope for the relief which courts afford to an owner of one of these trademarks is ordinarily limited to enjoining its use by another on goods that are practically identical.
If you are about to choose a new trademark, why adopt a trite, hackneyed term? Select a trademark that is unique, one which meets the legal requirements to give you broad protection.
Advertising slogans are protectable and registerable if they function as trademarks, but they must be distinctive and not merely advertising. We smile more, Where there is life… There’s Bud, Underneath it all, and Hair Colour so Natural only her Hairdresser knows for sure, have been found protectable or registerable. By contrast, Escape From the Ordinary was found merely descriptive and not to have attained secondary meaning.
Product and Container Shapes
To warrant protection as a trademark, the shape of a product, product component or container must be non-functional and must function as a trademark. The shape of the candy bar with a curved depression, the shape of the Haig & Haig “Pinch” bottle, and the unique design of a wrapped candy bar were all entitled to trademark registration. However, shapes which are primarily functional, adding to the usefulness of the product, are not eligible for trademark protection.
Instead of relying on the design patent or copyright laws to protect non-functional shapes, you should first consider trademark protection. If you succeed, you may be entitled to broad protection for an indefinite period.