When brainstorming, think of terms that do not describe the product or service. Or if you do, use those terms as a springboard to get to the next level—at least one step removed from the descriptive terms.
Strongest Marks are Coined Terms
Words that do not appear in a dictionary in any language are known as “fanciful” words. These coined terms, such as EXXON and KODAK, are the strongest marks. The protection of the mark will most likely extend beyond the scope of the mark’s use. The Kodak Cycle Co., Ld., for instance, was not allowed to use the KODAK mark in 1897, even though Eastman was not using the mark for bicycles at that time. It is very difficult to show that when third-parties use fanciful marks on unrelated products it was anything but a blatant effort to ride the coattails of the predecessor.
Next Strongest Marks are Arbitrary Terms
A word that has no logical relationship to the product is known as an arbitrary word. These arbitrary words, like APPLE for computers or HARD ROCK for restaurants, seem to have no apparent relationship to the product. While these terms would be generic if used to identify the actual meaning, they are powerful when the association has a random impression.
Suggestive Terms are Good Marks
The categories discussed up to this point are inherently distinctive and, thus, good. A term that requires some form of imagination, thought, or perception to reach a conclusion as to the nature of the goods is a suggestive mark. These suggestive marks, such as MICROSOFT for software of microcomputers or Q-TIPS for cotton-tipped swabs, require the consumer to link the term through a degree of association to arrive at the nature of the goods.
Descriptive Terms are Fine but Require More
When a mark is not inherently distinctive, the owner must prove that it has acquired distinctiveness before afforded any protection. Descriptive terms are not inherently distinctive. They describe the feature, characteristic, purpose or function of the product. Like marks used under common law, the owner must prove that the mark has acquired distinctiveness through secondary meaning. Or in other words, when a brand is mentioned, the consumer instantly recognizes the product associated with the term.
Generic terms are incapable of functioning as a mark. No matter how long the term is used or how much money a company spends on advertising, the term cannot be a source-identifier. A generic term is dead at the starting gates.
A dead mark, however, may be resurrected. If a term once functioned as a mark, but then lost its significance through generic use, advertising campaigns may be used to reeducate the public on proper trademark use. Some examples of resurrected marks include Singer sewing machines, Kleenex tissues, and Band-Aid bandages. The best way to prevent a trademark from dying is to enforce the proper use of a mark.
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