People ask me all the time if it is possible to trademark a product name. The answer is….sometimes. Some categories of product names are eligible for federal trademark registration with the United States Patent and Trademark Office (“USPTO”), while others are not. In general, the more unique and creative your product name is, the easier it will be to register it as a trademark and the more protection it will receive.
Generic Product Names
A generic product name receives no protection whatsoever and is ineligible for federal trademark registration under any circumstances. If you intend to sell t-shirts under the name SHIRTZ, you would be unable to protect that name because it is merely the phonetic equivalent of the English language word “shirts,” which is the generic term for your products. The downside to choosing a generic name for your product is that you cannot stop your competitors from using the exact same name for their products. But, the good news (if you can call it that) is that you never have to worry about being sued for trademark infringement and you don’t have to spend any money conducting a federal trademark search or obtaining a United States trademark registration.
Descriptive Product Names
A descriptive product name immediately describes a feature, quality, or characteristic of the product. A good example would be the name RAPID GLUE for a glue that dries quickly. The problem with descriptive product names is that they receive a very narrow scope of protection and are initially not entitled to federal registration on the Principal Register (although they may be allowed on the Supplemental Register). Generally speaking, a descriptive product name must be in commercial use for at least five years and have acquired “secondary meaning” before it is eligible for registration on the Principal Register. So, while descriptive product names tend to be popular because they tell consumers something desirable about the product, they are not a particularly good choice if you want a trademark registration or want to exclude others from using a somewhat similar name for the same type of product.
Suggestive Product Names
A suggestive product name suggests something about the product. For instance, the name LAVA for a chili sauce would be considered a suggestive product name. Why? Because LAVA suggests that the chili sauce is burning hot. Another example would be SNIFFLES for tissues. Most product names you’ll come across in your daily life fall into this category. Unlike descriptive product names, suggestive names are eligible for federal trademark registration right off the bat and receive a relatively broad spectrum of protection. Suggestive product names are definitely a solid choice from a trademark standpoint.
Arbitrary Product Names
An arbitrary product name is one that consists of a regular English language word applied in an unfamiliar manner. For example, if you wanted to use the word STAPLER for a tennis racket, that would be an arbitrary use of the word “stapler” because tennis rackets don’t perform the ordinary functions of a stapler. Arbitrary product names enjoy a broad scope of protection and are able to be federally registered with the USPTO.
Fanciful Product Names
Finally, a fanciful product name is one that is completely made up and has no meaning in the English language. So, the name YAGZET for a brand of laundry detergent (or really any product) would be a fanciful product name because it means absolutely nothing. Fanciful product names are eligible for federal registration and receive the greatest amount of protection under the law.
If you have any questions about whether you can trademark a product name, or are unsure about which category your product name would fall into, please do not hesitate to contact me. I would be happy to assist you.