Trademark Analysis: Should You Trademark Your Business?

The answer to the title question is a familiar one for attorneys: it depends. There are many factors that impact whether or not you should trademark your business name, including, if the name has value or significance to you and if any of your competitors are already using the same or similar name. Still, one other factor, and the topic of this post, is the strength or distinctiveness of your business name. A registered trademark will fall into one of 4 categories. In order from the strongest to weakest, in terms of trademark protection, they are:

1.     Fanciful;

2.     Arbitrary;

3.     Suggestive; and,

4.     Descriptive.

Trademark thermostat

(USPTO trademark strength thermostat)

From a legal perspective, it would be best to have the strongest trademark protection for your business, but, as discussed below, that may not always be the case.

Beginning with the strongest and most distinct trademarks, fanciful trademarks are created words that have no meaning or definition. Because of this, it can be a challenge associating your business and brand with the trademark. Kodak (US Registration No. 195,218) and Verizon (US Registration No. 2,886,813) are good examples of fanciful trademarks. Neither trademark is suggestive or indicative of the goods and services the two companies offer. However, through consistent use of their respective trademarks, we now associate Kodak with film and photography and Verizon with telecommunications.

Arbitrary trademarks utilize actual words but the words have no relation to the actual goods and services of the business or brand. Apple (US Registration No. 1,078,312) is a well-known computer and technology company and a strong example of an arbitrary trademark. Apples, as a fruit, have no connection to computers and technology, making the Apple trademark arbitrary, and quite distinct. Similar to fanciful trademarks, it takes commitment for the arbitrary trademark to resonate with consumers and the general public. Another example might be using the word ‘blue’ in the provision of financial services. The word ‘blue’ does not have a connection with financial services and the use of ‘blue’ would be arbitrary.

Suggestive trademarks are words or phrases that suggest some quality of the goods or services of your business. Often times, the consumer needs to make an inference to bridge the connection between the suggestive trademark and your business. Jaguar (US Registration No. 423,961) for automobiles is an example of a suggestive trademark. While jaguars are not often associated with automobiles, an automobile manufacturer using the word jaguar may be suggesting the automobiles it produces are fast, a trait often associated with jaguars.

Descriptive trademarks are words or phrases that describe the goods and services of your business. An example would be the word ‘blue’ for bottled water products or ‘creamy’ for yogurt. Descriptive trademarks are not registrable unless the words or phrases have obtained distinctiveness through years of use by you; and, even if a descriptive trademark has been registered, it would have less trademark protection than a fanciful, arbitrary, and suggestive trademark.

The above illustrates that the stronger trademarks (i.e., fanciful and arbitrary) come with the drawback of being dissociated with your business’s goods or services. It will be up to you to market and promote your brand so consumers can make the association between an arbitrary or fanciful trademark and your business’s goods or services. Likewise, most people will have already named their business in such a way as to make it descriptive or suggestive, helping consumers recognize them easier. If your business has been up and running, with some brand loyalty and equity already established, it may be difficult to do a re-branding, possibly losing some or all of that goodwill.

If you are thinking about trademarking your business, or if you have questions, you can email me at ken@meletelegal.xyz to set up a free consultation.

Other Considerations:

Trademark law recognizes a fifth category, known as generic trademarks. Generic trademarks are words and phrases commonly used to describe your goods or services, and they are never registrable. That is, no one can obtain an exclusive right to use these words because it would unnecessarily disadvantage others in that particular market or industry. Some examples of generic trademarks would be: ‘medical services’ for a hospital, ‘ski patrol’ for a ski resort, and ‘brewery’ for beer and taproom services.

Oftentimes, trademarks will straddle the line between one category and another, and, for those trademarks that contain two or more words and phrases, they may contain multiple categories of trademarks. Patagonia (US Registration No. 1,189,402), for example, could be an arbitrary trademark or a suggestive one, depending on who you ask. In terms of trademark protection, Patagonia would argue it is an arbitrary trademark. But, for those familiar with the Patagonia region in South America, the Patagonia trademark, as used for clothing and apparel, feels suggestive to the types of consumers buying the Patagonia apparel and the environments where the apparel will be worn. Portmanteaus, as a general example, may straddle the line between fanciful and suggestive trademarks. On the one hand, they are made-up words with no meaning or definition (see Microsoft, US Registration No. 1,200,236 and Netflix, US Registration No. 2,552,950). And, on the other hand, their created word does seem to suggest their goods or services; as in the case of Microsoft, one may get the impression that the company is in the business of microchips (Micro-) and software (-soft).

Melete Legal Trademark Analysis:

Let’s look at the trademark strength of Melete Legal under Class 45 for legal services.

            The word ‘Melete’ is the name of a muse in Greek mythology. Trademarking of names is covered by the Trademark Manual of Examining Procedure §§1206 and 1211 (TMEP Nov. 2023). Those sections only cover living individuals and deceased US Presidents, and the use of surnames. Melete does not fall under either §1206 or §1211 of the TMEP. Moving to the categories of trademarks discussed above, Melete would not be fanciful or generic. It is not a created word and it is not commonly used in the provision of legal services. Which leaves the two middle categories: arbitrary and suggestive. Melete would likely be viewed as an arbitrary trademark given its lack of connection to legal services. An argument could be made Melete was the Greek muse of practice which is closely related to the practice of law, but such a connection is quite distant and likely beyond the scope of an ordinary consumer. For the second word in the trademark, ‘Legal.’ A disclaimer will likely need to be made as the word ‘Legal’ merely describes the services to be provided (i.e., legal services). Disclaimers essentially permit the descriptive words to appear in the registered trademark, but the trademark owner cannot and does not have an exclusive right to use the disclaimed words. In this case, an alternative option is to forgo the word ‘Legal’ in the trademark application, making ‘Melete’ the only applied-for trademark. Ultimately, omitting or disclaiming the descriptive words is a personal choice.

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