Why are fanciful trademarks so valuable A guide for business owners

What you need to know (in a nutshell)

1. Fanciful trademarks are made-up terms used as trademarks and are the strongest type of trademarks.
2. Trademarks can fall into different categories based on their distinctiveness, with fanciful being the most distinctive and generic being the least.
3. Fanciful trademarks can become generic over time, also known as “genericity.” It is important to choose the right trademark for a business and to protect it through proper registration and use

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Fanciful trademarks are solely created to serve as a trademark and can be new words or uncommonly used older ones.

What trademarks are ‘Fanciful’?

Trademarks can be imaginative, and created solely to serve as a trademark. These may consist of neologisms (words with no meaning) or words from bygone eras that are not used commonly anymore.

Fanciful trademarks, which are unique and only have a meaning in reference to particular goods, are the strongest type of trademark.

Examples of well-known trademarks include Exxon, Kodak, Pepsi, Clorox and Xerox.

How strong can trademarks be?

Trademarks are only protected when they’re distinct and recognisable, allowing consumers to differentiate from other products. The more unique a trademark is, the better protection it will have.

Marks can range between 5 categories from most unique and powerful to least recognisable:

• Fanciful marks.
• Arbitrary marks. Arbitrary marks are words that have a meaning unrelated to the item being sold. For example, Apple is not related to agriculture; however, it can be trademarked in connection with computers.
• Suggestive marks. Suggestive marks allude to a product or service’s characteristics, so it takes some imagination for consumers to understand the business. Microsoft (software), Citibank (finance) and Jaguar (automobiles) are examples of such trademarks.
• Descriptive marks. Descriptive marks, such as “104 Key” for a computer keyboard and “deep bowl” are words that merely describe the product they relate to. They can’t be trademarks since customers couldn’t differentiate between products with this type of mark. Acquiring protection may take a while if it happens at all; secondary meaning must first be established in order for them to receive any legal recognition.

US trademark law views surnames in the same way as it does common descriptive marks. When public recognition of a surname with any product or service is lacking, then such mark can be classified as “mainly a surname.” A secondary meaning has to form for protection against others using it; an example being ‘McDonald.’ Thus Bob MacDonald would not be allowed to open up his own restaurant and name it ‘McDonald’s’.

• Generic marks. Common terms, such as “smartphone,” “email” and “bread” are not eligible to be trademarked. This is because the federal government has decided that no one should possess exclusive rights to a word regularly used by many people.

Genericide

Fanciful trademarks are the most powerful but over time they can become generic, i.e., “genericity” where a word formerly exclusive to one product is now applied broadly for all items of that type.

Words like “Aspirin,” “Linoleum” and “Elevator” are generics. The term, ‘Google’, may also soon become generic with individuals using the verb form, ‘to google’ when describing web searches regardless of which engine is used.

Selecting the Right Trademark

Your trademark could be invaluable. Selecting the perfect one is essential as your choice will have key implications for you business.

Investigate finding a reputable trademark attorney to help you determine the ideal trademark. This legal expert can guarantee your common law rights and decide if registration with the Patent & Trademark Office is necessary.

Here are some tips for selecting a trademark

Opt for a distinctive mark, e.g., fanciful or arbitrary trademarks.

Stay away from marks that appear similar to another mark in the same product/service category.

When choosing a trademark, avoid generic or merely descriptive words. This applies whether the term is an existing one (e.g., Apple for computers) or made-up (“boygear”). Made-up terms that describe product families cannot be registered either.

Refrain from choosing trademarks that could easily be misconstrued as non-registrable descriptive marks.

Refrain from selecting any signifier that displays vulgarity, as it cannot be registered.

Crafting an Appealing Trademark

Developing a perfect fanciful trademark entails finding the emotion that should be evoked with your brand. George Eastman, who invented Kodak’s mark, said it should be pointless, brief and easily pronounced while being vigorous in nature.

To find an antiquated term, consult a lexicon of archaic words. To invent one’s own word, play with different letter combinations (e.g., V, X & Z which pharma companies use). Additionally:

• Name the qualities you want customers to associate with your product and brand.
• Analyse your rivals’ trademarks. Identify widespread sounds used in the sector? What keywords do people use to search for similar goods from competing firms?
• What emotion should your product evoke? Is it youthful and carefree or more serious? Consider how you’d describe a person who embodies the brand – this can help determine its voice.

Reasons to Utilise a Fanciful Trademark

A distinctive, imaginative trademark is usually the optimum selection for numerous reasons.

Fanciful marks are distinct due to their lack of meaning. The more unrelated the mark is from its associated product, the stronger it will be; this holds especially true for new businesses with a distinctive business structure and large amounts of marketing capital.

Fanciful marks offer excellent legal protection and are the most powerful type of trademark. They have unique characteristics, allowing for exclusive rights to their use which prevents competitors from exploiting it financially.

Fanciful trademarks are the strongest and most secure against infringement or cybersquatting disputes. Generic and descriptive marks lack this strength, while suggestive ones can be difficult to differentiate from purely descriptive terms.

If another firm uses a minor alteration of your imaginative trademark, the court often finds this to be more perplexing for consumers than when words similar in sound make up both trademarks. Generally viewed as an infringement, like fanciful marks are usually not tolerated.

Reasons Against Fanciful Trademarks

Fanciful marks are the most robust trademarks, though there is a potential downside to consider.

Fanciful marks are unique but don’t explain your product. Therefore, you must educate the public on its connection to the mark which requires a notable advertising budget – not all companies can afford this.

Trademark Infringement Allegations - What then?

If you receive a cease and desist letter, it’s important to assess if the accuser has legal grounds.

Trademark infringement, cybersquatting and dilution can be alleged. Cybersquatting is the act of gaining financially through another’s trademarked name, while dilution happens when a mark’s owner suffers negative effects from its use.

To win a trademark infringement case, the plaintiff must demonstrate they are rightful owner of the mark and your use is confusing to consumers. It’s much simpler if it’s an imaginative mark since those naturally stand out; in this situation, accusation likely will succeed so you should seek qualified legal counsel.

If the trademark is used for commentary or art, it’s protected by First Amendment rights.

The key takeaway message is that fanciful trademarks offer the best protection and often suit companies well. However, long-term issues should be taken into account when selecting one.