By guest author, Cheryl Hodgson, Hodgson Legal

Brand names, and the trademarks that represent them, are among a company’s most valuable business assets. The selection of a great brand name begins with the branding process itself. But before making a final selection from any list of contender names, it’s important to find out if the desired candidates qualify for trademark registration; and whether that registration can be enforced against third parties. The ability to protect the brand name, and use it to build goodwill over the long term, should inform the final selection.

When selecting a trademark to marry to brand values and messaging, it is helpful to see where the proposed mark lands on the trademark continuum of legal protection. Brand protection experts, trademark agencies, and courts alike use the Trademark Continuum to decide whether a particular word for phrase can function as a trademark. Those that cannot so function should not be considered for use.

What is the trademark continuum?

The trademark continuum is a framework of assigned labels to determine the degree of legal protection a name can be afforded: coined, arbitrary, suggestive, descriptive, and generic. 

New brand owners tend to gravitate towards descriptive terms. This is to be avoided before investing in marketing, advertising and packaging. It is not always easy to know where a term fits on the trademark continuum. Some are obvious; others are more difficult to analyze and can be easily confused, even by experts in the field.

There are five choices on the trademark continuum. The first three are great but the last two are really bad!

Coined
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Coined marks are terms that function as trademarks. They are inherently distinctive. ALTOIDS, one of the oldest and strongest coined marks, was first used in the nineteenth century. Other well-known, fanciful marks are Exxon, Xerox, and Clorox. A coined mark is entitled to the greatest degree of trademark protection.

However, there is a caveat with a coined mark. While they are strong marks, a made-up term can become a victim of its own success. A coined mark should always be accompanied by a generic term that identifies the common name of the product or service to avoid the risk of “genericide”. Over the years, Xerox has become famous for its ads informing the public that Xerox is a trademark, not a verb for making photocopies!

Example of correct usage: XEROX copiers

We’ll see a few examples, below, of coined names that didn’t survive.

Arbitrary

An everyday word, picture, or symbol in common use can be applied, in an arbitrary manner, to goods and services that are unrelated to the term being used as a mark. These result in a strong mark. Apple and its famous bitten apple logo are, arguably, the world’s strongest arbitrary marks.

Suggestive

Terms that suggest but do not describe the qualities, ingredients, or characteristics of a product are great marks. A suggestive mark is distinctive – one of the strongest marks of all. Selection of a suggestive mark can be tricky because of the fine line between a descriptive and suggestive mark.

Selecting a distinctive, suggestive mark is challenging for new brand owners who gravitate toward descriptive terms. They want customers to understand what their company is offering. However, describing the product or services offered is best left to advertising and marketing materials.

IVORY soap is a well-known suggestive mark, as is CITIBANK.

One of my personal favorites is INTERIOR ALIGNMENT. The mark suggests there is structure or organization to an interior. Interior of what? The mark conjures up a question, a desire for more information, and that’s the reason it is a great example of a suggestive mark! INTERIOR ALIGNMENT identifies individuals trained as practitioners in the ancient Chinese practice of Feng Shui. Practitioners use the mark to signify the quality of the training they received.

Descriptive

A descriptive mark describes the intended purpose, function, or use of the goods. Words that describe the qualities, ingredients, or characteristics of a product are also descriptive. Descriptive terms may not be enforced as trademarks absent proof of acquired distinctiveness. To acquire distinctiveness, you must provide evidence that consumers associate the name exclusively with your products or services.

In 2015 alone, the Trademark Office rejected 29,992 applications on grounds the applicants' marks were too descriptive and therefore could not qualify for trademark registration.

Applications to register terms that are descriptive routinely receive a rejection. The Trademark Office may allow the mark to be registered on the Supplemental Register. At the end of five years, the registrant can submit evidence that the mark has become distinctive and move the registration to the Principal Register.

However, even if a mark makes it onto the Principal Register, it will almost always face a costly legal battle when it comes time to enforce rights. The owner must first prove that when consumers see the mark, they immediately think of the owner’s goods or services. This is a costly burden, and one that is not easy to meet. Trademarks with huge success do make the transition, but it is by no means certain and it’s not a wise path for the young startup. AMERICAN AIRLINES is an example of a descriptive mark that has become famous enough to be legally protected.

Generic

Generic terms are the words for the product. “Apple” for fruit is generic (but not for computers or iPhones). So is “Hotels.com” for hotels. Generic terms are not trademarks and are never protected when applied to the goods or services they represent. Hotels.com has no rights to the word hotels because the site offers hotel reservations, which makes its term generic in terms of the services offered.

There is a graveyard for former trademarks that fell victim to “genericide.” Some former coined names, trademarks that are now generic, are:
                                                             • cellophane
                                                             • 
zipper

                                                             • escalator

                                                             • pilates

Even if a mark starts out as high on the continuum, it must also be used properly in the market so as to maintain trademark rights. This means finding and using a generic term for the product, especially where the product is something new that did not previously exist in the market.

The moral of the story: Name selection and trademark protection are great bedfellows!
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Cheryl Hodgson is the lead attorney at Hodgson Legal, specializing in trademarks, copyrights and other intellectual property matters. She publishes the blog, Brandaide.

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