Failure to invest in and use branding that is protected by US trademark registrations detrimentally hurts a business in many ways. Competitors can freely imitate your brands and hurt your market share. The ability to sell or franchise your successful business may be reduced or destroyed. Even worse, the return on investment of each of your marketing dollars is lower than it should have been. Prior to contacting the attorneys of Garcia-Zamor, it may be worthwhile to brainstorm a few possible business/product brands. When contemplating potential brands it is important to think about what category of trademarks the brand may fall into, as viewed by the US Patent and Trademark Office. The law only protects business names that are “distinctive,” meaning that the business name distinguishes the merchant’s goods and services from those of others. Courts classify business names into five categories: (1) fanciful, (2) arbitrary, (3) suggestive, (4) descriptive, and (5) generic. Fanciful, arbitrary, and suggestive business names are inherently distinctive and therefore will be protectable, unless they could be confused with an already trademarked business name. Descriptive business names are only entitled to trademark protection if they have acquired a secondary meaning. Generic business names are not protectable under any circumstances. Fanciful Business Names (Strongest) Pick a Good (Protectable) Business or Product Name and Maximize Your Profits!
The law only protects business names that are “distinctive,” meaning that the business name distinguishes the merchant’s goods and services from those of others.
Business names with made-up words are considered to be fanciful, and are the most distinctive and protectable names. For example, Pepsi, Xerox, and Kodak are all words invented to serve as a business name. Arbitrary Business Names (Strong)
Business names that use existing words in a unique way are considered to be arbitrary, meaning that the words have an arbitrary relationship to the merchant’s goods and services. Examples include: Apple for electronics, Arm and Hammer for baking soda, and Domino for sugar. Arbitrary business names, like fanciful business names, are easy to trademark. Suggestive Business Names (Strong)
Suggestive business names suggest a characteristic of the merchant’s goods or services without actually describing that characteristic. The customer must use their imagination to make a connection between the name and the goods or services. For example, Texas Toast suggests oversized or thick bread, and Greyhound suggests buses with high speed.
10
NOZZLE & WRENCH I JULY 2025
Made with FlippingBook - professional solution for displaying marketing and sales documents online