by Wayne Harper
Special to the Florida SBDC at USF
When large, well-heeled companies select trademarks, either for a business name or a product line, they often hire a high-priced marketing firm and shell out six-figures for the marketing firm to select a trademark and most likely design a logo.
Small businesses, startups and entrepreneurs rarely have the luxury of hiring a sophisticated marketing firm for branding. Small businesses, startups and entrepreneurs commonly select their own trademarks, often based on something of a seat-of-the-pants analysis.
Some people gravitate towards trademarks that look like search queries, for example, “SV Houses” for real estate listings in Silicon Valley or something a bit less literal, such as “Brain Workout” for apps for exercising the brain using games or puzzles.
Not really a good idea.
Now, mind you, www.svhouses.com or www.brainworkout.com might make great domain names, and you might want to utilize “SV Houses” or “Brain Workout” in your paid ads or in your SEO strategy, but that doesn’t make these phrases legally strong trademarks, or good brands.
Legally, these trademarks could be considered generic, common words that describe a genera of goods or services, or descriptive words that describe what the product or service does, looks like, etc. This creates two problems.
First, you might have a very hard time registering the trademark. An application for registration will be rejected if the examining attorney decides the trademark is generic or descriptive. Usually, it’s very hard to persuade the examining attorney to withdraw.
Second, even if you get a registration, it might not stand up in court in a trademark infringement suit. Courts have the final say on trademark validity, and only give so much weight to the PTO’s decision to allow a trademark. Trademark examination at the PTO isn’t always rigorous, whereas trademark validity is vigorously debated in infringement suits. A registration is no guarantee the trademark will survive a lawsuit.
And really, if you think about it, if a trademark is descriptive or generic, does it really stand out in the market? Is it interesting? Is it compelling? Odds are, a descriptive or generic trademark is a weak brand.
Look for suggestive, arbitrary trademarks, or “fanciful” trademarks (fake words).
Suggestive marks are those that, when applied to the goods or services at issue, require imagination, thought, or perception to reach a conclusion as to the nature of those goods or services. Arbitrary marks comprise words that are in common use but, when used to identify particular goods or services, do not suggest or describe a significant ingredient, quality, or characteristic of the goods or services. These can be good trademarks, but you can do better.
Fanciful words, a word that the world has never seen before, nonsense words that don’t suggest anything, are far and away the strongest marks, legally anyway. An argument can often be made that what a trademark owner thinks is a suggestive or arbitrary mark is really descriptive or generic — you are using real words with real, preexisting meanings, after all. Not so with fake words.
What’s more, fake words can really stand out in the market. Some well known fanciful trademarks include Pepsi, Kodak, Xerox and Exxon. Recognize them?
Of course, some fake words could make really lousy brands. “FOPWE” or “GHJIOP” are fake words and would be legally strong, but would anyone remember them? Would consumers find them interesting or compelling? Selecting a good fake word can be hard work.
One type of resource that can be helpful — online fake word generators. Check out http://www.feldarkrealms.com/words/#.Vfm9n2RViko.
Use your imagination to find other ways to generate fake words. Maybe misspellings of foreign words? Inversion of common words? Think of your favorite words and take syllables out of them and mix them up? Ask a 4 year old or a kindergarten class? Just start spouting out nonsense syllables like a jazz singer singing scat?
In a word, have fun with it.
Wayne Harper, of Harper IP Law, PA, specializes in patent, trademark, and copyright prosecution and litigation, focusing on small businesses and startups.