Trademarks and names
Whether it’s Whistler or Longhorn, product codenames eventually get replaced with a formal product name. Determining what final name to use is a delicate balance of marketing (including domain name availability) and trademark rights. Just because a name would be a strong trademark doesn’t mean it is appealing from a marketing perspective, and vice versa.
A general understanding of how trademark strength is determined should aid in helping you choose a name for your web app, service or product, which will maximize its trademark potential.
What is a trademark? In legal terminology, a trademark is an ‘indicator of source.’ While legal definitions have never been accused of being easily understandable, what ‘indicator of source’ really means is that the trademark is a virtual arrow that points to a single business (or other entity). For instance, when you see the word FLICKR, you automatically think of a web app, now owned by Yahoo!
If a trademark ‘points’ to a single source of goods, then it is ‘distinctive.’ Distinctive trademarks are protectable, those that lack distinctiveness are not protectable. Thus, not all names are created equal.
Traditionally, trademarks can be classified into five different categories: generic (generically descriptive) trademarks, merely descriptive trademarks, suggestive trademarks, arbitrary trademarks and coined trademarks.
a. Generic
Generic trademarks are trademarks consisting of the generic name of the goods or services (hereafter just ‘goods’).
- Example: Company X releases a new web-based spreadsheet application under the trademark SPREADSHEET.
In such a case, it is impossible for the trademark SPREADSHEET to indicate source because a consumer will always view the word ’spreadsheet’ as generically describing the goods (a spreadsheet) rather than serving as a trademark (pointing to a single source of goods). Generic trademarks are never protectable and should be avoided like the plague.
b. Merely descriptive
Merely descriptive trademarks aren’t the generic name of the goods, but instead they describe them.
- Example: Company X releases a new web-based spreadsheet application under the trademark of FAST.
While FAST isn’t the generic name for a spreadsheet, it does (presumably) describe Company X’s spreadsheet. A consumer seeing the word FAST on a spreadsheet would not view the usage as a trademark (pointing to a single source of goods) but would instead view it as merely being a description of the goods themselves (that they are fast). Thus, Company X’s FAST trademark fails to function as a trademark (it doesn’t distinguish over the goods of its competitors) and is therefore not protectable.
Of course, if a trademark owner’s use of a merely descriptive trademark over an extended period of time results in consumers actually viewing the term as an indicator of source and not as being merely descriptive of the goods, then at that point the trademark has ‘acquired distinctiveness’ (secondary meaning) and is protectable. Acquired distinctiveness can be difficult to prove and as such it is typically best to avoid adopting merely descriptive trademarks.
c. Suggestive
A suggestive trademark does not merely describe (or generically describe) the goods, but instead suggests a feature or quality of them.
- Example: Company X releases a new web-based spreadsheet application called CONFIDENCE.
While the term ‘confidence’ may suggest that you can trust the spreadsheet, it does not merely or generically describe the spreadsheet. Suggestive trademarks are by definition distinctive and are protectable.
So, where is the dividing line between ‘distinctiveness’ and ’suggestivity?’ Judging whether a term is properly classified as descriptive or suggestive depends on several factors. Generally speaking, suggestive trademarks are those which need imagination, thought or perception to decide what the goods actually are. Descriptive marks, on the other hand, immediately describe something about the goods with which the mark is associated. So, if the words in the mark describe the goods connected with the mark, then the mark is descriptive. If, however, a consumer must make a leap of imagination to understand why the trademark was selected, then the mark is suggestive. All clear?
d. Arbitrary
An arbitrary trademark is one whose use is arbitrary…having no connection with the goods.
- Example: Company X releases a new web-based spreadsheet application called ICECUBE.
The word icecube has no relationship to spreadsheet applications. Its use is completely arbitrary. Arbitrary trademarks are, by definition, distinctive and protectable.
e. Coined
A coined trademark is a trademark that was coined or made up.
- Example: Company X releases a new web-based spreadsheet application called XYROTHAN.
The word xyrothan has no meaning in English or any other known language. Coined trademarks are likewise, by definition, distinctive and protectable.
Summary
Generic trademarks should never be used. Merely descriptive trademarks should be avoided because to be protectable you have to prove that the public has come to recognize the trademark as an indicator of source and not as merely being a description of the goods. Suggestive, arbitrary and coined terms are therefore desirable from a strength standpoint.
This is a hard lesson for many entrepreneurs to learn. Most want to use a product name that enables aperson viewing the trademark to immediately know what the product is. The problem is that because a merely descriptive trademark uses descriptive terms, every knock-off application that surfaces will likely use one or more of the same descriptive terms in naming their product. When that happens, consumers are easily confused into which product to download/use. Thus, it is imperative that you pick stronger trademarks to use with your goods.
Trademark Registration
Provided that your trademark is not generic or merely descriptive (unless secondary meaning exists), it may be worth your while exploring the benefits of trademark registration.
Note: trademark rights vary from country to country. The following briefly explains the benefits of Federal (US) registration for trademarks used in the United States. If you reside in another country, you’ll want to discuss these matters with local counsel.
Why Register?
A trademark user acquires rights in a trademark by using the trademark in commerce, not by registering it. The value of Federal (US) Registration is that it provides a registrant with broad nationwide coverage for the trademark upon the cited goods. Prior users, if any, typically can only cut snippets from this broad blanket of coverage. Federal Registration also puts others on notice as to the registrant’s use, thereby preventing future conflicts by warning off potential users of the same or similar trademarks. An additional benefit is the possibility that the U.S. Patent and Trademark Office (USPTO) would prevent later filed trademark applications from registering that are likely to cause confusion with your trademark.
Trademark Searching
Because US Federal and state trademarks can be infringed, and common law/state unfair competition actions also come into play, a proper trademark search of Federal (US), state (all 50 states if the trademark will be used in interstate commerce), common law, and international trademarks should be made before settling upon a product name. Such a search should be performed regardless of whether or not a trademark application will be filed.
If a potential issue exists with respect to your proposed trademark being likely to cause confusion with a third party’s trademark, knowing that fact before expending thousands/hundreds of thousands of dollars in advertising and branding will oftentimes prevent a tremendous amount of grief.
While an intellectual property attorney’s services are typically needed to perform thorough trademark searches and the interpretation of the results, a cursory search of the Internet for related products, as well as searches of the USPTO trademark databases: www.uspto.gov can be made as you narrow your list of product names to have your intellectual property attorney review.
Consideration of these points should help increase the protectability and ultimate strength of the trademarks you use.
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[…] Some time ago I wrote an article - which seems to have disappeared because it referenced someone I no longer link to - about the use of the trademark. Its both an interesting and important subject so when I woke up this morning and found Stephen Nipper’s Trademark Tips for your Web App on Vitamin my interest was right there. If there’s one misunderstood part of our business lives - especially starting out - then trademark would have to be in the race. […]
Very interesting article, I admit that I’d never really thought about trademarks before, I guess I just assumed that you thought up a cool name and then went with it. You’ve opened my eyes to a potential minefield here, thanks for the heads-up.
This was a useful article. Thank you.
I have a follow up question. As to web application naming and product naming in general, where do the lines get drawn as far as industry separation? If company X has a product named Bubblegum and it’s in the gardening industry (and national distribution, fairly well known), can a company come up with a web application (not in the gardening industry) and call it Bubblegum as well?
And I’ve used the example “Bubblegum” because it’s fairly generic and not unique.
Chris:
>where do the lines get drawn as far as industry separation?
You’re right…given the appropriate separation, more than one party can use the same trademark. For instance, DELTA airlines, DELTA faucets, DELTA tools, DELTA Burke (just kidding), etc.
The ultimate test (in the US) is whether or not there is a likelihood of confusion. Sadly, there isn’t a black and white test for determining whether or not confusion will or will not exist…it really depends on the facts as applied to the law (an act best left to your legal counsel).
Thus, could you sell bath soap under the trademark “Web 2.0″? It depends on whether or not there is a likelihood of confusion with another third party’s “WEB 2.0″ trademark.
Thanks for the clarification. Appreciate it.
[…] WildApricot is a is well written web application ,with lots of attention to usability, that looks to automates daily administrative routines for associations and non-profits (professional associations; trade associations; charities; social welfare organizations; health issues organizations; sports and cultural associations; clubs; chambers of commerce; faith-based organizations; alumni organizations). They only thing I would change it the Name to something both more descriptive and more professional. “Association Pilot”, “Member Tree” or “Pilotr” (very web 2.0′iee). Feel free to free associate on names. I’m sure the current name has it history, but it will be easier to market if it at least rhymes with its purpose. ( Think Vitamin has a Trademark tips for your web app) Anyhow, it is a great application with great potential. http://www.bonasource.com/ BonaSource knows their stuff […]
Stephen,
Thanks for a great article, I am so happy that the insightful Guy Kawasaki links to your article here.
A week ago I got ino a lengthy discussion which somehow turns to Canadian trademark (or my “confusion” [pun intended] abou it). Although the laws are different between Canada and US but I suspect I can still learn a lot from your insight.
I will quote myself briefly here, “Here are two recent Supreme Court of Canada cases in 2006 related to “confusion” in trademarks.
Mattel, Inc. v. 3894207 Canada Inc., (known by many as the “Barbie” case)
http://scc.lexum.umontreal.ca/en/2006/2006scc22/2006scc22.html
Veuve Clicquot Ponsardin v. Boutiques Cliquot
http://scc.lexum.umontreal.ca/en/2006/2006scc23/2006scc23.html
Both of these judgments were written by Justice Binnie (a justice with strong background in business and corporate law). And in both cases, the court held that there were no “confusion” between the two trademarks.”
source link: http://seanwise.typepad.com/wise_words_lessons_in_ent/2006/07/dd_potential_pi_1.html#comment-20095774
After reading your DELTA airline example, I think I am a bit clearer now. But I still have a few questions and would love your insight on it.
Take this as an example, “Banana Magic” is an existing registered trademark in use for car wax and now someone wish to register and use as trademark (without registering it) the name “Magic Banana” for a totally unrelated product. Will this cause problem? In some sense, the new name “should” be safe because the product is totally unrelated but then, if the registered owner of “Banana Magic” has deep pockets, can they keep the new guy in the court room for years to come causing tons of legal fees?
Cheers,
Kempton
Hi, thank you for the useful article… I was so lost before!
I still have a couple of questions:
What if product A is in the USA, for example facebook, and new product B is in Europe (lets say, friendsbook.com).
Are trademarks international?
And is the likelyhood of confusion still prevalent when only part of the name is used (as in “book” here)?
Thanks for writitng quality content!
Regarding (comment from False Positives » Blog ):
First - thank you for your kind words about our product and company!
About our Wild Apricot trademark:
If fact we have very carefully considered names like MemberThis, AssociationThat - and rejected them. First, there are already way too many companies named like that - we would not stand out. Second, we are targeting small and midsize non-profits so we want to be warm and friendly and not stuffy shirts. Third, this name is easier to remember.
See also our own blog post about the Wild Apricot trademark
Q. Are trademarks international?
Currently you cannot file one trademark application and get worldwide coverage. Thus, you’ll have to rely on country-by-country protection and/or treaties (Madrid Protocol), etc. to protect the trademark in multiple countries.
>And is the likelyhood of confusion still prevalent when only part of the name is used (as in “book” here)?
It depends on the “part” and application of the likelihood of confusion test. Could you use “bay” with your online auction site? Probably not. Could you use “e”? Possibly.
Thanks for the fast reply. It makes a lot of sense.
Q. “Banana Magic” is an existing registered trademark in use for car wax and now someone wish to register and use as trademark (without registering it) the name “Magic Banana” for a totally unrelated product. Will this cause problem?
Again, the question to ask is: “is there a likelihood of confusion.” If so, one has issues. Sadly there isn’t a black or white answer. An attorney (US) answering your question would apply the relevant factors (which are laid out in the Wikipedia entry: http://en.wikipedia.org/wiki/United_States_trademark_law#Judging_the_likelihood_of_confusion) and form his/her opinion regarding whether a likelihood of confusion exists (based upon the facts).
Q. …if the registered owner of “Banana Magic” has deep pockets, can they keep the new guy in the court room for years to come causing tons of legal fees?
If “Company X” has a trademark registration and is willing to spend the necessary legal fees challenging later uses of the trademark/related trademarks, they can make it very painful for junior users of the trademark to use it even on unrelated goods.
Some companies use this tactic in an attempt to strengthen their existing trademark rights. The fewer the users of TRADEMARK there are out there…the stronger their TRADEMARK trademark is (in theory).
Other companies only worry about junior user trademark use where there is actually a likelihood of confusion.
A further point on international patents. It is especially expensive to apply for a patent in Japan because of the language translations and proofreading fees for the many technical documents. As well, filing for patent protection in Europe could be very costly too.
I found John Ramsay’s book, “Ramsay on Technology Transfers and Licensing, Second Edition (2002)” a useful tool when I did some research on patents for a MBA course paper that I was writing.
Cheers,
Kempton
————
My Favourite new Canadian TV show starts taping today :)
http://www.insidethedragonsden.com/
Stephen,
By the way, I should thank you publicly (after privately thanking you in email) for your previous insightful reply. Without this public thank, I felt like so impolite in my 2nd post here.
Have a great day,
Kempton
—
P.S. I also linked back to your answer here from the other blog (which I also thanked you).
http://seanwise.typepad.com/wise_words_lessons_in_ent/2006/07/dd_potential_pi_1.html#comment-20633960
[…] This fantastic post on trademarks was written by Stephen Nipper for Vitamin.com. It’s written from a software / web application mindset, but I think it makes understanding what is and is NOT protectable by trademarks much easier whether you’re in a software maker, a butcher or a coal miner. So without further ado, here’s the article: […]
Guy Kawasaki also mentioned this article. Additional discussion can be found in the comments to his post.
very intereseting indeed but i think it defenitely need some words about how trademarks works in canada and europe.
[…] I was motivated to write this after reading one of the few thorough entires on the topic I have ever seen. Check out Stephen Nipper’s article ‘Trademark tips for your web app‘ at the excellent Think Vitamin site. He’s even answering direct questions in the comments so maybe he’ll hook you up. […]
Thanks for the article. I digg it.
I have one question: Say I have a corporation called “Adams Educational and Training Corporation”, would the mark
AE&T
made up from the company name count as a “coined mark” and therefore protectable?
Thanks again for your insight.
If you want some more information, check out www.tmexpress.com
They are a great company for Trademarks, incorporation, registered trademarks. TradeMark Express Business Consulting Company Name Copyright Corporate Corporation Delaware Incorporate Domain Registration
What about text + an image? Everyone has a name but typically we have a catchy image as well that sometimes appears with the name.
For example Delta Airlines appears a couple of ways:
1. the word Delta (in connection with airlines)
2. Delta (name as logo - white lettering, mixed case, unique serif font)
3. Blue/white/red chevrons forming a triangle. with the word Delta to the right.
How does all of this need to be trademarked? As three separate trademark or as one (e.g. submitting the image at the upper left of delta.com) .The goal would be to make all of them secure (image is protected, the workdand the typeface).
Does a trademark have to be registered before you can use the trademark symbol tm?
And, does the product have to be tangible to categorize it as a trademark? If you are providing a service, would this be considered a service mark?
[…] A few pointers for trademarking your web app August 02nd, 2006 Trademark tips for your web app. […]
Nice site! kabababrubarta
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Great article covering the basics of trademarks. You did an excellent job describing the differences between strength of marks. My only follow up would be that you really can’t underestimate the important of trademark registration. It really isn’t a very expensive procedure, even if you use a trademark lawyer, and the benefits, as you noted, are enormous.
[…] http://www.thinkvitamin.com/features/webapps/trademark-tips-for-your-web-app […]
Jackie asked if the trademark has to be registered before you use the TM symbol. This is a very common question, and the answer is simple: You do not have to wait until you complete the trademark registration process to begin using the TM symbol. In fact, you can begin using the TM symbol at any time.
Sometimes though, I think, the project name is way cooler than the name they come up with. I know that from a marketing perspective, things are different (and maybe I just like the trademark perspective better) but I’m sometimes convinced they made a mistake. In the case of Vista, Longhorn would have been a horrible name (obviously) but in the case of AIR, I think Apollo (it’s original name) would have been much better. AIR is pretty cool, but I really like Apollo. AIR, though, might have designed to coincide with RIA, but what AIR actually stands for is something only those in the industry would understand.
Thank you for sharing this information to us. We used to believe that whatever trademarks we used will just have the same effect. Your post is one great realization and eye-opener for us.
Do you know of a website where I can check the trademarks of vitamins/product companies. WE are checking to see if a name is already in use before we choose it for our vitamin company.
[…] Naming a New Business Vitamin magazine published this a while ago, I reread it from time to time and think there are some pretty good guidelines there. At least tangentially related is this article discussing what types of names are trademarkable. […]