The Game Lawyer Blog

How strong is your brand? The five levels of trademark name protection

Distinctiveness is the key in choosing a registrable mark.

When choosing a brand for your company, product or service, it is wise to think about the trademark implications of the name should you ever want to register it in the future. Distinctiveness is the key in choosing a registrable mark. Trademark law gives five categories of distinctiveness in which names generally fall. These categories are not clear cut, however; think of them more as a “continuum” or “spectrum,” like a rainbow.

Fanciful Marks

A fanciful mark is, essentially, a made up word that gives your brand the highest level of legal protection available to trademarks. These marks are completely unique to the brand and not found in the dictionary. They have “inherent distinctiveness” to other marks, and therefore are immediately registrable.
Examples: Exxon, Xerox, Kodak

Arbitrary Marks

Like fanciful marks, arbitrary marks are also inherently distinctive and are afforded a high level of protection. Unlike fanciful marks, however, arbitrary marks are words that already exist elsewhere. What makes them protectible is that they are being used in a way that bears no relationship to the products or services being sold. Because of this detachment between name and product, the mark is very strong.
Examples: Apple (for computers), Carnival (for cruises), Sun (for computers)

Suggestive Marks

While still inherently distinctive, suggestive marks are the least of the three “strong” trademark types. With suggestive marks, the word mark itself “suggests” something about the product or brand, usually some quality or characteristic. They must still require some imaginative leap or distant connection, however, and not merely describe the product.
Examples: Microsoft (suggesting software for microcomputers), Nike (the goddess of victory, suggesting victory if you wear the products)

Descriptive Marks

Marks that are descriptive are not inherently distinctive.

While often confused with suggestive marks, a descriptive mark is one that does exactly that: describes the product or brand. Marks that are descriptive are not inherently distinctive. They must show “secondary meaning” in order to be registrable. This means that the mark holder can prove that the public associates that mark with their brand. Once secondary meaning is acquired, a descriptive mark can be protected from infringement in court.
Examples: Windows (describing windowed software), International Business Machines (IBM), Park N Fly, Internet Marketing Group

Generic Marks

Words that are in the public domain that actually name the product are unprotectable by trademark, even if they acquire secondary meaning. A generic term, however, could be protectable in one of the other categories, as in the case of Apple for computers. If one were using it as a mark for an apple-selling company, however, it would not be protectable.

One issue with trademarks is “genericide,” wherein the mark becomes generic over time when the public associates the mark with that class of products and not specifically those that are from that brand. For example, Aspirin, Cellophane and Escalator are marks that have become generic through improper use. Xerox, however, has spent lots of money on advertising preventing this from happening.
Examples: Personal Computer, Milk (for milk), E-mail

Conclusion

Putting some thought into how protectable your name will be could save a lot of hassle down the road.

Coming up with a strong brand for your game products or services involves more than just coming up with a cool name. Putting some thought into how protectable your name will be could save a lot of hassle down the road. For more help in determining how protectable your trademark will be, contact your local game attorney for advice and counsel.

For more information on trademark issues, see my posts on intellectual property or check out the USPTO’s site.

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California game lawyer focused on providing end-to-end legal protection and legal services for video game and board game developers, as well as software and mobile app developers.
California game lawyer focused on providing end-to-end legal protection and legal services for video game and board game developers, as well as software and mobile app developers.
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