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Creating a Distinctive Trademark From Merely Descriptive Terms
© Cheryl Hodgson 2007 | Posted on July 19, 2007
Trademarks indicate the source of goods and services. Many self-appointed marketing gurus in the internet age advocate selecting a term for the name of the goods or services that describes the nature of the goods or services. From a marketing perspective, the name of the good should also describe what the good claims to provide. In other words, the perfect mark for a broom would be “BROOM” – its name says exactly what it is, and the fact that it is a registered mark precludes anyone else from using it on their brooms. Of course, this puts competitors at a serious disadvantage and stifles the economy, which is why the law says that words that are “merely descriptive” are not protectable as trademarks.
The challenge for the business owner, then, is to select a mark that suggests what the product is or does without actually describing it literally (e.g. “BREATH MINTS” is not protected; “” is). One way to do this is to create either a completely arbitrary or fanciful mark (e.g. using for computers is arbitrary, or , a made-up word, for copiers). Another approach is to take two or more otherwise descriptive words and combine them in a way that creates a distinctive mark. This is easily said, but not quite so easily done!
Descriptive Marks:
Words that are merely descriptive of the goods or services are never registrable as trademarks. However, the law says that two or more descriptive terms can be combined to form a composite mark that may be registrable, provided the composite mark as a whole is distinctive. Therefore, it is important when combining two descriptive terms to ensure that the resulting composite mark does more than simply describe the goods as a whole.
Examples of descriptive, unprotectable marks include:
FOOD AND BEVERAGE ONLINE - information service for food processing industry
OATNUT - bread made from oats and hazelnuts; conjoining the words does not change its descriptiveness
EXPRESS BANKING - banking services
RUSSET FRIES - dehydrated fries made from Russet potatoes
ULTRA/PHONIC - for a sound conducting material; note that the "/" does not change its descriptiveness
THE TRAVEL PLANNER - for a travel directory
Distinctive Marks:
On the other hand, if the marks are put together in such a way that the resulting composite is no longer merely descriptive, it is registrable and protectable as a trademark. One of the best examples of this is : the mark is . If we remove the words “celebrated” and “curiously”, the mark is “The original strong peppermints” – a totally descriptive mark. However, the words “celebrated” and “curiously” make it into a highly distinctive mark, which, when combined with the company’s extensive marketing campaign, is actually incredibly effective.
SUGAR AND SPICE - bakery products; the name suggests food without describing it
CHERRY-BERRY-BING - fruit preserves; the addition of "bing" makes it distinctive
- translucent medical/surgical tape; effective combination of two descriptive terms
- pork sandwich; note that "pork sandwich" would not be protectable
SEASON-ALL - storm windows; reversing it to be "All Season" would be descriptive
- a travel directory; the acronym in the beginning makes it distinctive
MORAL: if you are selecting a composite mark, do it in a way that suggests the type of product you are selling without describing it!
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