While applying for a Federal trademark may not be the first legal step you take with your business, you should give some thought to the registerability of your company name, and the names of your products and services, sooner rather than later.
A major determination of whether you can register a trademark is the use or registration of other trademarks that are "confusingly similar" to your intended mark. Even if no one is using a name anywhere near your name, however, there are certain types of words and phrases that are completely barred from the registration process.
Potential trademarks fall under one of five1 major categories: (1) fanciful marks; (2) arbitrary marks; (3) suggestive marks; (4) descriptive marks, and (5) generic marks. A fanciful mark is a unique term or phrase that has no prior meaning, such as "Exxon" or "Xerox." These types of marks come with the strongest protection and likelihood of registration because they are essentially created to act as a trademark. Just below fanciful marks in terms of strength and likelihood of registration are arbitrary marks, such as "Apple." An arbitrary mark has a meaning/prior use but is unrelated to the subject matter of the current trademark. Suggestive marks allude to the goods or services covered by the trademark but require some imaginative leap to connect the two, such as "Plyboo" for bamboo laiminate flooring and plywood made of bamboo.
Suggestive marks are the lowest level of trademarks in terms of strength and registrability. Descriptive and generic marks are not available for registration through the ordinary registration process2. A generic mark is nothing more than the generic name for the goods or services covered under the mark, such as "Container.com" for shipping containers. Descriptive marks merely describe the character of the goods or services sold under the mark, such as "Travel Care" for personal care and travel accessories.
The Balance Between Marketability and Registrability
While arbitrary and fanciful marks may be the strongest and easiest to register, they can be difficult to market. When your trademark does nothing to inform potential customers of your goods or services you can have problems launching a new brand or product. Alternatively, rolling out a line of products under a descriptive name may be easy to garner attention but could open your company up to competing and similar uses.
Suggestive marks walk the line between protection and recognition. Having your attorney work with your marketing team can go a long way to ensure that your desired trademark is both catchy and legally protectable. When crafting a suggestive mark consider using related terms with similar connotations, such as "Mercury Software" for communications software.
[1] Additional categories of unregisterable subject matter exist, such as geographically descriptive, deceptive, and disparaging marks. Similarly, marks that are merely a surname cannot be registgered on the Principal Register.
[2] While descriptive and surname marks may not be eligible for Primary Register registration, the "Supplemental Register" exists as a type of trademark holding tank while waiting for consumer and market recognition to give an otherwise unregisterable mark secondary meaning.
