*Information for this blog post is provided by Lehrman Beverage Law.
If you have tried to register a trademark you may have come across words like ‘generic,’ ‘descriptive,’ ‘arbitrary,’ or ‘fanciful’ just to name a few. Someone (maybe a lawyer?) might have told you to trademark a fanciful name and not a generic name. What do these words mean and how can they help you federally register your trademark?
- Synonymous with the described goods or services, such as the word ‘beer’ to signify actual beer.
- Beware: some trademarked words are generic because it’s commonplace to use the trademarked word to describe the goods/services. Kleenex is a trademarked word but over time ‘Kleenex’ has come to mean every tissue regardless if it’s the actual Kleenex brand.
- Describes an aspect of the goods/services, such as barrel to describe whiskey.
- Descriptive terms range from names to geographic terms.
- The applicant must show secondary meaning (that the public associates the mark with the applicant’s goods/services).
- Indirectly references a characteristic of the goods/services; customers must connect to the mark to the product.
- A word that already exists but has nothing to do with the goods/services. For example, Apple computers.
- Usually arbitrary words do not become generic.
- Only has meaning when it is used in relation to a specific product. For example, Exxon, Pepsi, Xerox, just to name a few.
- Usually are made-up terms invented for functioning as a trademark.
Remember! The public needs to identify the mark associated with your goods/services from the goods/services of your competitors. A strong mark is not a generic term, but is distinct with no connection to your company’s goods/services.
Contact the USPTO