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When creating a business or product name you need to be certain that the trade name you are using is distinctive enough to make a legally strong trademark. Every product and service name contains two different parts. The first part of the name specifies a particular company’s version of a product or service (Cadillac vs. Toyota, Blue Shield vs. Kaiser Permanente) This part of the name-always capitalized because it serves as a proper adjective-is the trademark. The second part of the name specifies the kind of product or service (for instance, automobile or health plan). This part of the name-a common noun- is never protectible.
If the name of a service or product does not operate to distinguish one company’s versions of that service or product from all other versions of that same product or service, then it is not considered to be a mark. Another way to think of it is that if a word is used in a mark to mean exactly the same as the dictionary definition of the common term for a product or service, it is generic.
An example that illustrates the problem of using a trademark without a second part is Roller Blades. Many people think that’s the name of the product. But “roller Blades” is merely the trademark of one company that makes in-line skates, which is the generic term for roller skates that look like ice skates. If people continue to use Roller Blades to mean the product and not one brand of it, it will become generic term, just as did yo-yos, aspirin, linoleum, dry ice and so on.
Like generic marks, ordinary marks receive little legal protection. Ordinary marks consist of words that aren’t usually distinctive by themselves, but that aren’t generic either:
Because marks that use ordinary words in ordinary ways are, by definition, not distinctive--that is, they aren’t unusual in the context--they receive little legal protection at the out set of their use. That means that under the principles of trademark law, it’s more difficult to keep them or something similar. For example, “Dependable Dry Cleaners” merely describes the business, without distinguishing it from its rivals. In fact, some of them might also need to advertise their services as reliable or efficient. If trademark law prevented such ordinary uses of common words, our language would be seriously depleted. As a result, “Dependable Dry Cleaners” gets little protection as a mark from the courts.
To be effective, a trademark must do two things. It must unique enough to distinguish a product or service from the competition. It must be unique enough to legally prevent others from using it (or anything similar) in a way that might confuse customers about the origin of a product or a service. The key feature of an effective trademark then, is that it is distinctive. And in fact the more distinctive it is, the more effective it is at preventing others from imitating it.
Distinctive marks make legally stronger marks because they have a greater ability to ward off copiers than a common name does, for three reasons:
2. When exposed to a distinctive name consumers strongly expect that it identifies a particular business. For example, when you patronize a business with an unusual work, like Double Rainbow Ice Cream, you don’t expect to find other unrelated businesses using it. The opposite is true with a very common name. You instinctively realize that there might be several Best Ice Cream Stores, or more than one pizzeria names Joe’s under different ownership in one metropolitan area or region. Thus you are not likely to be confused into attributing the characteristics of one to the other. In sum, because consumers assume that two businesses with the same unusual name are related, Double Rainbow has a greater need to keep others from using its mark than does Joe’s or Best’s.
3. While it makes sense to give the owner of a distinctive name a monopoly on its use, it would unfair to grant anyone the exclusive right to use an ordinary name such as Acme, Allied or Ace. A trademark is essentially an exclusive right to use a certain word, phrase, or other identifier on a particular good or service, to the exclusion of all others. It seems fair to give exclusive right to the originator of a highly unusual name, like Such a Business for a children’s store, as a reward for their creativity. But it’s unclear who deserves the award for thinking up Roy’s Pizza or other common terns like Food Fair or Top Value, words that many reasonably wish to use to describe or market their business. Why should anyone get superior rights to use such an everyday phrase? Besides, it would be a legal nightmare to try to stop all the thousands of uses that might infringe on such a mark if one business did get exclusive rights to use it.
Certain marks will cause more trouble in the long run than they are worth in the short run. These include:
b. marks that describe attributes of the service or product or its geographic location. The main reason to avoid these marks is that they are legally weak and therefore not extensively protectible until they have been in use long enough that they have become easily recognized by your customers. It is often five years before such marks can be registered on a federal or state trademark list and then only with difficulty. Nevertheless, these types of marks are among the most popular and may be the sort you want to use for reasons that have little to do with legal protection.
c. names with bad translations, or unfortunate homonyms (sound-alikes) or unintended connotations. These you should avoid because they will backfire as advertising tools. The Chevy Nova is an unwise trademark for a car in Spanish-speaking countries (including our own because of the high proportion of Spanish speakers) because the mark means “it does not run” in Spanish.
d. names to close to other well-known marks
If you are concerned about litigation, avoid variations of famous marks. Whether they succeed or not, claims trademark infringement or dilution ( an additional state-law theory used to protect well known marks) are commonly brought by owners of famous marks in order to clear the field. McDonald’s regularly sues companies that use the “Mc” prefix or yellow arches. Often they succeed -- preventing the use of “McSleep”for motels and yellow arches for a computer company.
Your new name will be an important step in how your business will be defined by your customers of the future. A name will gain a life and asset value of its own as you invest in the marketing of it. Your choice of a new name will be one of the most important decisions you will ever make for your business. A company’s name becomes its entire focal point.
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