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U.S. Trademark Law
A trademark is generally a word logo, package design or combination of them, used by a manufacturer or merchant, or to be used by one who has a bonafide intention to use it in commerce to identify its goods and distinguish them from others. Brand names identify goods; service marks identify services; certification marks identify goods or services meeting certain qualifications; and collective marks identify goods, services or members of a collective organization. Federal trademark law prohibits product imitators from passing off their goods and services as the products of others.
What’s in A Name?
By Rick Martin
Do you know the difference between a strong, weak, or mediocre trademark? The majority of manufacturing executives suffer from one common malady. They want to name the product exactly what it is. A new grass seed would be named, “slow grow no water grass.”
Most executives believe they gain extra leverage by describing the essence of their product in the trademark. That might be very well be true. However, our free society does not condone the monopolization of descriptive common words for new products. Our English language is public property. Most executives forget this basic fact when considering a new trademark.
Trademark rights are a form of permanent monopoly for particular words, slogans or logos. It would not be fair to grant a monopoly to a firm whose logo was simply a drawing of the Rocky Mountains, for example. This would forbid others from ever using a similar logo for like products. Our society believes the Rocky Mountains, like the English language, are public treasures to be shared by all. Therefore, our society will not enforce any law that gives you a monopoly on descriptive words or logos ( a few narrow exceptions exist).
What shall you do? The heaving hitters in the history of the American economy have chosen arbitrary trademarks. Prior to the creation of these arbitrary trademarks, they were meaningless words. Prime examples include Exxon, Xerox and Kodak. Choosing an arbitrary trademark takes guts. The manufacturing executives gain absolutely non-descriptive value from the mere mention of the trademark at the beginning of the product life cycle.
When I heard the word Exxon, I thought it was a kindergarten writing tablet upon which you place an “x”. Advertising and exposure to gas stations nationwide imbedded a new meaning for the trademark, Exxon. Following this example, I recommend choosing a totally arbitrary trademark which is best illustrated by coining a new word. For those of you with less guts than the executives at Standard Oil, there exists an entire world of trademarks which might provide a compromised between strong arbitrary trademarks and weak descriptive ones.
This mediocre class of trademarks is classified as suggestive trademarks. One classic example is, “Tennis in the round.” What do you think the product is? If you envisioned a circular tennis work out arena having pie-shaped courts and a central multi-barreled ball machine to allow multiple single players to rebound off a central column, then you are right. The idea for a suggestive trademark is to tease your prospective buyer with tantalizing hints at what you product is without disclosing pertinent details.
Having practiced in Florida for a while, I dealt with some products for the elderly. A gentleman came into my office with a mechanical hearing aid shaped much like a sea shell. He wanted to name it the shell hearing aid. Do you think the United State Patent and Trademark Office would grant a monopoly to this kind gentleman for all the time for the use of those descriptive words for his shell hearing aid? This answer was NO!
I tossed around a few ideas and offered the following trademark, “Ear Awake.” This little name and the gentleman’s marketing and manufacturing talents have earned him customer acceptance of a simple mechanical device. If you have real guts, go for the “alphabet soup” trademark. If you are like most of use and want to be creative and reach a compromise, go for the suggestive trademark.
(This article was published in the May/June 1993 issue of Inventor’s Digest. It is being reprinted with the permission of Inventor’s Digest)