More on Trademarks

Trademark selection is a job best done with the assistanceof your trademark attorney.

Selecting a good trademark, like selecting good wine, requires skill and sophistication. Intuition and common sense can often lead to ineffective trademarks, just as guessing over the wine list can lead to a disappointing dining experience.

Some marketing managers who should know better suggest legally ineffective trademarks for their products. Obviously I cannot reveal too many specific details, so I will create some examples to illustrate bad trademark choices I have seen. You cannot simply take a noun that is generic for the goods or services you're selling and make it into a trademark. This rule prevents someone from claiming private ownership over a common word. Thus, you can't use the word Computer as the trademark for a computer you sell.

You cannot use tricks of written or spoken language to get around these restrictions. Le Car would not be registrable to describe the newest model of automobile. Making the trademark sound like an exotic foreign language doesn't make the mark less generic. You cannot create a trademark simply by describing obvious product features and writing it in a unique way. Thus, PhoneRinger would not be registrable for a device that makes a sound when a telephone call arrives. And you cannot deliberately deceive consumers by being misdescriptive. The mark OpenSource could not be applied to a proprietary closed-source operating system. Trademarks that are “merely descriptive or deceptively misdescriptive” cannot be registered (15 U.S.C. §1052(e)).

Another frequent mistake is to try to capitalize on a competitor's trademarks (MacPizzas for a new chain of pizza parlors or Pentalium for a microprocessor) to get instant recognition in the marketplace. These trademarks probably would be attacked because they are likely “to cause confusion, or to cause mistake, or to deceive” as to the origin of the goods or services (15 U.S.C. §1052(d)).

Trademarks can incorporate the adjectives Supreme, Superior or Enhanced, but such marks are of limited value. These terms are so over-used that they have lost their ability to distinguish goods or services. Also, you cannot take someone else's trademark and add one of those words to create your own trademark.

You must prevent your trademark or service mark from becoming generic for your goods or services. That is why Xerox tries diligently to prevent people from saying “I'm going to make a xerox of that document” instead of “Xerox copy”. To prevent your trademark from becoming generic, always make sure it is used as an adjective and never as a noun.

A trademark does not exist in isolation. It must be used in conjunction with specific goods or services to signify the source or origin of those goods or services. For this reason, the same word can be used by more than one company as a trademark, as long as the goods or services are different. Thus, you can buy a Cadillac automobile and Cadillac dog food, and there will be no confusion among customers seeking one product and accidentally buying the other.

Trademark attorneys describe a spectrum of possible trademarks. In ascending order, which roughly reflects their eligibility for trademark status and the degree of protection accorded, these classes are:

Descriptive: certain marks are descriptive of the product, the name of the owner or the place where the product originates. They convey an immediate idea of the ingredients, qualities or characteristics of the goods. The distinction between a generic and a descriptive term was illuminated using the example Deep Bowl Spoon:

“Deep Bowl” identifies a significant characteristic of the article. It is merely descriptive of the goods, because it informs one that they are deep in the bowl portion....It is not, however, the “common descriptive name” of the article, [since] the implement is not a deep bowl, it is a spoon....“Spoon” is not merely descriptive of the article—it identifies the article—[and therefore] the term is generic.

—Fletcher, “Actual Confusion as to Incontestability of Descriptive Marks”, 64 Trademark Rep. 252, 260 (1974)

Suggestive: a mark is suggestive if it requires imagination, thought and perception to reach a conclusion as to the nature of goods, for example, Orange Crush, Cuisinart and London Fog.

Arbitrary: when a common word is used in an unfamiliar way, examples include Apple, Apache and Python. Arbitrary terms often make good trademarks because they are likely to be more appealing to customers and are more easily remembered.

Fanciful: is usually applied to words invented solely for their use as trademarks, such as Altoids or Kodak. Fanciful words can make excellent trademarks because there is no possibility of confusion with real words.

Legal advice must be provided in the course of an attorney-client relationship specifically with reference to all the facts of a particular situation and to the law in your jurisdiction. Even though an attorney wrote this article, the information in this article must not be relied upon as a substitute for obtaining specific legal advice from a licensed attorney.

Please send legal questions regarding open-source software and related issues to geeklaw@ssc.com.

email: lrosen@rosenlaw.com

Lawrence Rosen is an attorney in private practice in Redwood City, California (www.rosenlaw.com). He is also executive director and general counsel for Open Source Initiative, which manages and promotes the Open Source Definition (www.opensource.org).

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