Why Marketing Hates your Proposed Trademark

I have worked with countless marketing companies that advised their clients to “be descriptive” when selecting the name of a company or product. The theory is, having a name that describes an aspect of the product or service makes it easier to market that product -- you don’t have to spend as much on consumer education or advertising.

Yet as we discussed, a truly descriptive mark will not be registerable as a trademark – and does not stand out in the marketplace. It may be a pain to spell B-E-R-K-E-L-H-A-M-M-E-R all day long, but once people see it, they remember it. By contrast, there are literally five Mike or Michael Millers in my address book, and I never know which one is calling me when I see the name pop up on my phone.

The legal department thinks your trademark should be a Donna Berkelhammer and not a Mike Miller.

I recommend fanciful or arbitrary marks, because it is almost impossible to predict whether the trademark office will consider your trademark as suggestive or descriptive.

Examples of “suggestive” marks are:

· CITIBANK for financial services

· GREYHOUND for bus lines

· JAGUAR for automobiles

· PLAYBOY for publishing/magazines

· MICROSOFT for software for microcomputers

· SKINVISIBLE for transparent bandage

· POLY PITCHER for polyurethane pitcher

Examples of “merely descriptive” trademarks are:

• CREAMY for yogurt

• COZY WARM ENERGY SAVERS for pajamas

• FORUM for business training seminars

• OATNUT for bread containing oats and hazelnuts

• E FASHION for software for consumer use in shopping via the Internet

• 1-888-M-A-T-R-E-S-S for telephone shop-at-home mattress retail services

• URBANHOUZING for real estate services

• HONEY-BAKED for hams

• ICE for beer

• JET for spray nozzle

• L.A. for low-alcohol beer

• ULTIMATE BIKE RACK for bike rack and design

• VISION CENTER for optical clinics

Why is POLY PITCHER for polyurethane pitchers suggestive, but COZY WARM ENERGY SAVERS for pajamas or URBANHOUSING for real estate services are both merely descriptive? See the problem?

So How Would a Trademark Attorney Advise You to Choose a Trademark?

• Make up a word. What are some Greek or Latin roots that relate to your product? Can you combine the owners’ names or initials into a word? Can you shorten your company name into something catchier (National Biscuit Company = NABISCO)? What is a combination of words describing your product that you can combine into an acronym or other word as a trademark (MICROSOFT= software for microcomputers)? For example, a tutoring company might be CELEREDU TUTORING (combining the Latin roots “celer” for quick with “edu” for learning). Or take it a step further and make it ACCELER-ED TUTORING, building upon the common word “accelerate” to drive home the concept of fast results, as well as playing on the Latin roots.

• Use a random word. And speaking of common words, why not use a common word that has nothing to do with your product? Your tutoring company could be SAILFISH TUTORING or PEANUT BUTTER AND JELLY TUTORING or HONEYSUCKLE TUTORING.

• Use a word that suggests what your product or service does. Perhaps LAMPLIGHT TUTORING or SUNSHINE TUTORING would suggest the concept of a light bulb going off when a student learns something new, or ELBOW GREASE TUTORING would suggest the tutoring company makes students work hard to learn.

A final piece of advice from the legal department: Before you settle on a trademark, make sure it is not infringing on a pre-existing mark. Contact a trademark attorney for more information.