When Being Fanciful and Arbitrary is Good for Business
By Business & Taxation Practice Group
Pat owns and operates a successful bakery with a popular retail store. Her Bakery sells an array of baked goodies, including cookies, cupcakes, scones, etc. The Bakery’s most popular item is a bite-sized cake that is attached to a popsicle stick. She coined the new product “Cake on a Stick”. Especially during the holidays, the Bakery sells baskets full of these cakes at their retail store and online throughout the country. Pat spent years promoting her product and considerable resources promoting the name and developing the Bakery’s online presence.
With her newfound national success, Pat decided to file a trademark application with the US Trademark Office to register her mark “Cake on a Stick”. Unfortunately, her trademark application was rejected and she did not get the benefits of trademark registration, which would include a legal presumption of her ownership of the name and her exclusive right to use the name nationwide on the baked goods. The Trademark Office refused registration on the basis that the name, Cake on a Stick, was merely descriptive of the product, and therefore not registrable. Pat could have avoided this situation if she first evaluated the strength of the mark before thoroughly investing in and promoting it. The stronger a trademark, the easier it is to register the mark with the Trademark Office and to protect it from infringing users. A mark’s strength is based on its distinctiveness in relation to the goods or services it is used with. Distinctiveness is categorized along a continuum, ranging from weak marks that are generic for the goods and services to strong or highly distinctive marks that seem to have no connection to the goods and services. Each category is described below.
Merely Descriptive Marks
The Trademark Office will not register a merely descriptive mark on the principal register, which provides full trademark protection. A merely descriptive mark describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services. A mark is also merely descriptive if it immediately conveys knowledge of a quality, feature, function, or characteristic of an applicant’s goods or services. For example, the mark “Cake on a Stick” merely describes the characteristics of the product. Cake on a Stick immediately conveys what the product is to a consumer. Additionally, the foreign equivalent (direct translation) of a merely descriptive English word is still merely descriptive and thus cannot be registered. For example, the Trademark Office concluded that AYUMI, a Japanese word which roughly translated means “walking”, was merely descriptive of footwear and could not be registered. The Trademark Office also concluded that SAPORITO, which is an Italian word meaning “tasty”, was also merely descriptive of the applicant’s food product. Although it may be tempting to use a mark that easily identifies your goods or services, you may spend a lot of time and resources investing in a weak mark that can’t be protected. Instead, try to identify a mark that requires your potential customers to use some imagination. Not only will the mark be easier to protect as a trademark, it will stand out more to your customers.
Suggestive Marks
Suggestive marks are moderately strong marks that can be registered with the Trademark Office. Suggestive marks require imagination, thought, or perception to reach a conclusion about the goods or services. For example, the Trademark Office found that SPEEDI BAKE for frozen dough was suggestive because it only vaguely suggested a preferred characteristic that it would bake quickly. Pat would have fared better with a more imaginative mark, one that offered a hint as to the product, but did not directly describe its characteristics. Perhaps, Pat could have tried a name that played on the portable nature of the product or suggested its shape or describe how it is prepared. The line between a descriptive mark and a suggestive mark is sometimes hard to distinguish. While suggestive marks are stronger than descriptive marks, in the end they may not be adequate because there are likely to be similarly named products that cause confusion to consumers. If Pat wanted the strongest mark possible for her product, then she should find a trademark that has little to no connection to the characteristics of the product, but instead is fanciful or arbitrary.
Fanciful or Arbitrary Marks
Fanciful marks are made of terms that were invented for the sole purpose of functioning as a trademark. Fanciful marks are either words that are made up or are or are completely out of common usage. Pepsi, Kodak and Exxon are all examples of fanciful marks. Arbitrary marks include common words that do not suggest or describe an ingredient, quality, or characteristic of the goods or services. For example, APPLE is an arbitrary mark for computers because, while it is a common word, it has no evident connection to computers. Fanciful and arbitrary marks are the strongest types of marks because they stand out the most to consumers. They are also generally easier to register with the Trademark Office. While using a fanciful or arbitrary mark may require some more investment in the short term, and take time to create in a consumer’s mind the connection between the mark and the owner’s goods or services, these trademarks create a much stronger impression to consumers and may cost less to protect in the long run. Before you pour time and money into trademarks that identify your products or services, consider the strength of the mark and how easy it may be to register with the Trademark Office.