So, you think you’ve come up with the perfect name for your new company and want to register it with the United States Patent and Trademark Office (USPTO) before your launch your brand. This is of course the right way to be thinking about protecting your company’s most important asset but before you begin, it is worth considering whether your name is indeed eligible for trademark protection. This article will consider “Suggestive Trademarks” and how to think about their viability as protectable intellectual property.
TRADEMARKS EXIST ALONG A SPECTRUM OF DISTINCTIVENESS
Remember, trademark law is chiefly concerned with distinctiveness: The more “distinct” a name is, given the products/services sold under the banner of the name, the more trademarkable. The less “distinct” the name, given the products/services sold under the banner of the name, the less trademarkable. For example, a clothing company which wants to call itself, “Best Quality Shirts”, would not be permitted to register a trademark for this name because it is simply a generic description of the products sold – thus, it does not serve as a brand identifier, or a trademark. Conversely, if the name of this company were “XYLG”, such a name would be eligible for trademark protection because the name is purely meaningless and bares no relationship to what’s being sold. Thus, it can serve the purpose of acting as a source identifier.
What happens when the name falls somewhere in the middle of being entirely generic on the one hand and purely distinct on the other? This sort of mark doesn’t quite describe what’s being sold but perhaps the name indicates what a consumer can expect to be purchasing based purely on the name.
According to the USPTO’s trademark manual (TMEP § 1209.01), a suggestive trademark is a word or phrase that insinuates certain characteristics of the good or service it is identifying. Suggestive trademarks require that consumers use a certain degree of intuition, thought, or imagination to reach a conclusion about the products or services the mark is identifying. So, a suggestive trademark ultimately requires a certain element of creativity and imagination on the part of the third-party observer (potential customer) to understand what will likely be sold under the banner of this trademark. If it does not require imagination to understand what’s being sold but rather it is immediately obvious, the mark cannot be said to be descriptive.
IS A SUGGESTIVE TRADEMARK? DISTINGUISHABLE FROM A DESCRIPTIVE TRADEMARK?
Ahh, this is where trademark law gets complicated. Suggestive marks often get confused with descriptive marks but they are not the same thing. Suggestive trademarks can be registered with the USPTO and filed on the much-vaunted Principal Register (rather than the Supplemental Register), assuming all other requirements for trademark registration are met. Indeed, the USPTO recognizes suggestive marks as one of the stronger types (at least relative to generic/descriptive names) of trademarks a business owner may register.
Descriptive marks, conversely, are (typically) ineligible for registration on the Principal Register and instead can be found on the Supplemental Register.
WHAT IS A DESCRIPTIVE TRADEMARK?
Descriptive marks simply use a word or words to describe a characteristic or feature of the underlying product. For example, you wouldn’t be able to register the name “Cold and Creamy” as a brand of ice cream. Likewise, “Salty and Crunchy” would not be allowed as the brand name of fried chicken. Beyond the reasonable understanding that these descriptive words should be available to all manufacturers of ice cream and fried chicken, respectively, merely descriptive trademarks are inherently weak because they don’t act as source identifiers. Or, in other words, “Salty and Crunchy”, as a name, does not allow a consumer to understand who the company is which is selling the product. Trademarks, as a theoretical matter, must serve to distinguish the company which sells the product and if the prospective trademark is too descriptive, the consumer will not have an immediate means of discerning the company behind the product.
HOW TO DISTINGUISH DESCRIPTIVE FROM SUGGESTIVE TRADEMARKS
One of the things you want to look at when determining if your mark is suggestive or merely descriptive is the level of incongruity between the words in relation to the underlying products or services. Ask yourself, is the relationship between the mark and the goods/services obvious? If there is little to no thought required, or the trademark is obviously connected to the underlying product or service, then you may have a merely descriptive trademark.
Are the words in your mark not typically seen together outside of your product or brand name?Is there a requirement on the part of the consumer to make a leap of imagination or “connect the dots” in any way? If so, you most likely have a suggestive trademark.
EXAMPLES OF FAMOUS SUGGESTIVE TRADEMARKS
The following list provides several examples of effective suggestive trademarks:
- TurboTax for fast tax preparation.
- QuickBooks for fast and easy bookkeeping.
- Fast Signs for fast sign production.
- eTrade for online stock trading.
- NoDoz for an anti-sleep aid.
- Reddi-Whip for instant whipped cream.
- Dry Lok for moisture resistant paint.
- Rust-Oleum for a rust resistant spray.
- Coppertone for sun tan lotion.
- Netflix for an online movie streaming service.
- KitchenAid for a range of products used in household kitchens.
- Healthy Choice for prepared and frozen meals.
Remember, Suggestive marks walk a very fine line before crossing over into bona-fide Descriptive trademark territory but in the subtlety lies all of the difference. The moment it becomes too obvious what’s being sold (product/service), the mark is no longer suggestive but is instead descriptive and therefore ineligible for protection on the Principle Register.