From "Wealth of Ideas" e-newsletter, May 2005

The process of obtaining a trademark or service mark is not as simple as one might think – and it’s something the entrepreneur should consider when choosing a name for a new business. For some very basic information and surprising facts about trademark law, read on:

A trademark is a word, symbol, or combination of words and symbols that serves to identify the source of goods (i.e. Coca-Cola). A service mark performs the same role with regard to services (i.e. FedEx). Trademarks cannot be merely descriptive of the goods themselves.

The measure of a good trademark is its distinctiveness in sight, sound and connotation. Trademark distinctiveness can be described by the following four categories, from most distinctive to least distinctive:

1. Coined or Arbitrary marks – these are either made-up words (Verizon, Xerox) or existing words with no apparent connection to the product (i.e. Apple computers and Camel cigarettes). These are the most distinctive marks and thus have the strongest legal protection.
2. Suggestive marks – These marks suggest some feature or attribute of the goods without being descriptive, as in the use of “Coppertone” for suntan lotion.
   
3. Descriptive marks – Much less distinctive than the first two categories, descriptive marks are generally only allowed to be registered if they have a secondary meaning. However, some descriptive marks that have been in use for many years or decades are strong marks because of their longevity, such as “Holiday Inn” – which is just what the name suggests.
   
4. Generic terms – These least distinctive of marks are technically not marks at all. If your company produces yarn, you can’t trademark yarn.

Besides the distinctiveness requirement, marks also cannot be registered if they are offensive or inherently barred. Inherently barred marks would include, for example, those that made use of the name and/or likeness of a living president; the name/likeness of any living person without their permission; or the Olympic symbol.

An interesting fact about trademarks is that they are examined phonetically – so misspelling “phone” as “fone” won’t make it sufficiently distinctive in itself to be a trademark for a phone manufacturer; it would need to be paired with another, more distinctive, word (or words). Also, the mark will be examined in consideration of foreign words that have a descriptive meaning – so if you want to use “Aqua” as a trademark for bottled water, you’d better reconsider.

Finally, a note on the proper use of trademarks: Trademarks are adjectives. The mark should be followed by a descriptive term, such as “Kleenex tissues” – referring to the tissue itself as a “Kleenex” (or the southern-US habit of referring to all sodas as “Cokes”) is a use that threatens to make the mark generic and thus unprotectable (like the former trademarks thermos, aspirin and escalator). And your trademark will not cover every use your company might possibly make of it, only those for which it was registered.

Trademark law is much more complicated than most laypeople think. As there are a lot of intricate issues involved in trademark law (as in all IP law), it is most prudent to consult an attorney who can help you with the process of trademark search and registration.