What to Consider When Picking a “Creative” vs. Non-Creative Trademark

Create Time 2018-02-13 01:02    Views:17405

Oftentimes, trademarks that may seem appealing from a marketing standpoint will have some deficiencies from the standpoint of eligibility for registration at the United States Patent and Trademark Office and will be limited by the guidelines of trademark law.

Choosing a trademark for one’s goods and services is not necessarily a simple task.  It is often asked, is it better for a mark to instantly communicate to potential consumers which goods or services are associated with the mark (e.g. to be a very clear, non-creative mark) or is it better to have a “creative” trademark? (e.g. Uber, Apple, Pepsi, Pringles)

Trademarks are categorized into various categories including generic, merely descriptive, suggestive, arbitrary, and fanciful.  These categories have an impact on whether a trademark is eligible for federal registration and protection.

“Cold and Creamy” may be an appealing mark to be used with ice cream from a marketing point of view, because a company using such a mark can easily convey the impression to the consumers what the company is selling and the desirable qualities that the product has to entice consumers to buy the product.   However, from a trademark standpoint, when an applicant attempts to register this mark, the applicant is likely to face a “merely descriptive” rejection.  This means that if an applicant wants to receive a valid trademark registration, the applicant is likely going to have to agree to be registered on the Supplemental Register (secondary register) and to actively work at developing secondary meaning for a trademark until this mark has enough recognition to be considered unique and distinctive to be registered on the Principal Register.

A company or individual has to weigh the decision whether to be “creative” and to come up with a very suggestive, arbitrary, or fanciful name that does not directly connect the actual goods and services in the mind of the public or to have a more “clear” mark that clearly describes the marketed goods and services the company or individual is offering to the public with the possibility that the trademark may not be eligible for registration on the Principal Register, because this “clear” trademark is not considered unique or distinctive enough with the listed products and services the applicant is selling to the public.

On the plus side, those applicants who are “creative” in selecting their trademarks, because they have chosen a mark that is either suggestive, arbitrary, or fanciful, are usually rewarded for such a decision by the Trademark Office, and do not have to deal with a rejection from a Trademark Examiner that the mark is “merely descriptive.”  

On the other hand, due to marketing and advertising considerations and because a company wants to make a direct, instantaneous link in the customer’s mind between the trademark and the goods or services being offered, many companies and individuals end up selecting a trademark that from the Trademark Office’s point of view is considered either a generic mark or a merely descriptive mark.  It is very easy for a company or other applicant to become very attached to his or her favorite mark, even if the mark is not really eligible for federal trademark protection for various reasons, including that the mark is generic and/or merely descriptive.  Ultimately, the decision rests with the company or applicant whether to be “creative” or “clear” with their mark.

It is noted that many “creative” marks such as “Apple”, “Pepsi”, “Uber”, and “Microsoft” are considered very strong marks and have become world wide brands with a tremendous amount of goodwill and brand recognition.  Therefore, companies and individuals applying for a trademark should consider using a “creative” trademark in order to have a more unique, distinctive, and potentially stronger mark.

Disclaimer:  This website is not intended to offer legal advice or to be a substitute for a consultation on a case by case basis with an attorney.  The information provided above is meant for informational purposes only and may be subject to change. 

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