For many business owners and entrepreneurs, one of the first decisions is what to name the new business, service, or product you’ll be selling. This name plays an important role in your business because it’s one of the first things your customers or clients will come into contact with, and you want to stand out!
Because of the important role that words and phrases play in this decision, it can be equally important to place some barriers around your logo and brand so that you can distinguish your products and services from those of your competitors.
For example, if Aquafina, Dasani, and Fiji water were all sold in identical clear glass bottles, how would know which one to buy? The trademarks help you identify where the water came from without opening up each bottle and tasting it first.
You can protect your trademarks so that you stand out in the marketplace and make it easier for your clients and customers to identify your products.
The most common way to protect words, phrases, logos, and other things is trademark law. Trademark law protects any word, symbol, slogan, or other designation” that identifies your company and distinguishes it from other companies.
A trademark can be anything — from the typical name or logo to a sound, motion, or smell. Basically, anything that is distinctive and separates you from the competition.
Some of my favorite examples of non-traditional trademarks registered by the United States Patent and Trademark Office (USPTO) are AKA’s skee-wee sound, goats on the roof of a restaurant, and the vertical opening of Lamborghini doors.
So when I said trademarks can be just about anything, I really meant anything.
Even though the definition of what can be a trademark is pretty broad, there are three specific requirements that have to be met to receive trademark protection:
- you have to use the trademark first in commerce,
- your trademark cannot be functional, and
- your trademark must be distinctive.
First, you have to be the first to use the trademark with a specific category of products or services. What this means is that, even if there are 200 other uses of “bae” on the internet or registered with the USPTO, if no one is using the word to sell lampshades or something too similar, you are probably free to do so because you’re the first to use “bae” to sell lampshades.
Second, the designation can’t be “functional.” If it does something useful, or makes a product/service more aesthetically desirable, it isn’t protected by trademark law. For example, if you invent a new cell phone case that makes the phone’s screen harder to break, you probably can’t trademark that case’s design, because it has a function (making the screen harder to break).
Third, a designation has to be “distinctive.” There are four basic categories of distinctiveness: arbitrary/fanciful, suggestive, descriptive, and generic. The worst kind is generic – if a designation is generic it can’t be trademarked. Generic terms are essentially the words that tell us what a thing is — i.e., you can’t trademark the word APPLE to sell an apple.
Descriptive designations are only trademarkable if they have something called “secondary meaning.” Descriptive items identify characteristics or qualities of a product or service — i.e., QUICK PRINT for printing services or BEEF & BREW for restaurants that sell, you guessed it, red meat and beer.
Secondary meaning basically looks into the minds of your customers – have you done enough marketing, advertising, and selling so that customers now associate the descriptive words with your company? If so, you may be able to protect the designation as your trademark.
Suggestive trademarks suggest, rather than describe, characteristics or qualities of a product or service. With these, you don’t have to prove secondary meaning. One example is COPPERTONE for suntan lotion – the trademark suggests that you will get a brown skin tone by using the product. These types of trademarks are easier to protect than descriptive trademarks because you don’t have to prove secondary meaning.
Arbitrary and fanciful trademarks are the strongest. An arbitrary trademark exists when you use a word or symbol that already exists in a completely unrelated context. Using the earlier APPLE example, APPLE for computers/phones is arbitrary. The word already exists, but a company is using it to sell products completely unrelated to the fruit.
Fanciful trademarks are treated similarly, but exist when you use a made-up word or symbol. An example would be KODAK for cameras. “Kodak” is a made up word that didn’t exist before the company created it as the trademark for its camera-related products.
These parameters should provide a basic starting point for thinking about the trademarks you have in your own company. For even more suggestions about how to identify potential trademarks, check out my 7 Steps to Protect Your Brand e-book.
Also, if you are still struggling to understand these concepts, drop a comment below and I’ll do my best to answer your question!