SUB CATEGORIES OF IP

Obtaining trademark rights in a name begins with an understanding of what the name will be. While most creative persons will tend to pick the name that sounds the catchiest and then go from there, those with trademark knowledge may be able to save themselves some time, money and headaches by starting the creative process with trademark law in mind.

Marks come in various forms of strength. Marks that are known as fanciful are the strongest, arbitrary marks are next in terms of strength, suggestive marks come later still, and descriptive marks are not protectable under trademark law. Fanciful marks are marks that have no other meaning in the English language, and as such could only refer to the product for which they are an indicator of source. For example, Exxon is a fanciful mark because Exxon has absolutely no other meaning than the name of an energy company. Apple, on the other hand, is arbitrary as applied to consumer electronics, given that apples have absolutely nothing to do with computers other than that there is a company called Apple, and they sell computers. Next in line are suggestive marks, which are marks that suggest a particular meaning thought perhaps not right at the moment they are read. For example, Greyhound is a suggestive mark, as it connotes a dog running fast and likens it to a bus moving fast across the country. Usually, a suggestive mark will be read, thought about, and accompanied by an “ah-ha” moment.

Descriptive marks are not protectable namely because they describe things in our world, and to accord rights to use of such marks for which a trademark holder could extract a licensing fee would be to pull commonly used and necessary descriptions out of our lexicon. In short, free speech necessitates that descriptive marks not be protected, unless of course they acquire what is known as “secondary meaning.” Secondary meaning is basically a situation where consumers have come to identify this otherwise descriptive mark with a particular source of goods or service. For example, American Insurance Group is a mark that has likely acquired secondary meaning; while it is completely descriptive (it is a group that sells insurance based in America), the name has grown relatively famous and as a result has come to represent a particular company or “source” in the minds of consumers.

While names can be trademarked for companies, they can also be trademarked for brands. This is also known as the difference between a house mark (the company) and a brand mark (the product line). Perfumes and colognes, for example, often utilize both of these types of marks, and fragrance companies as well as fashion companies have robust trademark practices to ensure the names they choose are not already taken, and that there is no great risk of infringement in using the mark.In short, trademark in a name is a process best initiated by what marks are strong, what marks are protectable, and what marks are not.