Partner
Trademarks are powerful tools that can be used to create and cement customer loyalty to a product or service and that can drive sales and profits. Some trademarks are so powerful and famous that, by themselves, the trademarks are worth billions of dollars. To be powerful, a trademark must be distinctive enough to create an association in the minds of consumers between the trademark and the product or service being offered for sale. In this respect, it is generally considered that there is a spectrum of distinctiveness with “fanciful” trademarks being the most distinctive. As discussed below, having a distinctive trademark is important for several reasons. Once a trademark is established and has begun to function as a trademark, it is necessary to legally protect the trademark to the fullest extent allowed under the law. A trademark entitled only the owner of the trademark to use it. If someone else infringes on that use, then trademark infringement litigation can be initiated. Substantial money damages can be obtained if the trademark infringement litigation is successful. Of course, top-tier trademark lawyers and trademark infringement litigation attorneys will be needed to provide legal assistance and to prosecute the case.
What is a fanciful trademark?
In most circumstances, a “fanciful” trademark is one that is a “made-up” word or combination of letters or numbers which have been invented or created for the sole purpose of being used as a trademark or service mark. Some of the most famous examples are GOOGLE, PEPSI, KODAK, KLEENEX and EXXON. Another manner of creating a fanciful trademark is to use an old English word that is no longer in common usage. Examples included FLIVVER and FUZZLE.
When creating a possible trademark, it is important to consult with a trademark and intellectual property lawyer to conduct a trademark usage search. If a proposed trademark is already in use, then a different trademark will have to be created. Further, deeply knowledgeable trademark lawyers can help with the creative process, too. For example, when creating a fanciful trademark, it is not enough to string some symbols together. The goal is to create a linkage between the trademark and the product/service. A strange, weird and unpronounceable trademark will not function as a trademark since customers will not be able to remember it. The key is to invent a word that can be pronounced and remembered.
Why a fanciful trademark matters
There are several reasons that having a fanciful trademark is an advantage. First, to have maximum legal protection, a trademark must be registered with the US Patent & Trademark Office (“USPTO”). The easiest type of trademark to register with the USPTO are fanciful trademarks. This is because, as noted above, a fanciful trademark is inherently distinctive. For other types of less distinctive trademarks to be registered, the USPTO requires proof that the trademark has acquired “secondary meaning.” This can be difficult and expensive to show.
Another advantage of a fanciful trademark is that it will be less likely to already be in use. This will make it easier to have the trademark registered.
Contact the Trademark Lawyers at Revision Legal For more information or if you have questions about creating and registering a trademark, contact the trademark lawyers at Revision Legal at 231-714-0100. We can defend your trademarks from infringement and can provide a trademark infringement defense team if you are wrongly accused.
Federal trademark law classifies marks along a spectrum of distinctiveness, from most to least protectable: fanciful, arbitrary, suggestive, descriptive, and generic. Understanding where a proposed mark falls on this spectrum is essential before investing in brand development, because only marks that are sufficiently distinctive can be registered with the USPTO and enjoy federal trademark protection under the Lanham Act, 15 U.S.C. § 1051 et seq.
Fanciful marks enjoy several significant legal advantages over descriptive or suggestive marks. First, they are immediately registrable on the Principal Register of the USPTO without any requirement to prove acquired distinctiveness. Second, because they are invented words, no competitor has any legitimate reason to use them — there is no “need” in the marketplace for someone else to use KODAK or EXXON to describe their products. This makes it easier to prove confusion and infringement when a third party uses a similar invented word. Third, fanciful marks are less likely to become generic over time (a process called “genericide”) than marks that started as more descriptive terms. Marks like ESCALATOR and ASPIRIN lost their trademark status because they became the generic name for the product — a fate less likely to befall a purely invented word.
From a business strategy perspective, a fanciful mark also provides a blank canvas for brand building. Because the mark has no pre-existing meaning, the owner controls entirely what associations consumers develop with the mark. Every marketing dollar spent on a fanciful mark builds equity in a term that competitors cannot legitimately co-opt.
Before adopting any trademark — fanciful or otherwise — a comprehensive clearance search is essential. A clearance search examines the USPTO’s trademark database, state trademark registrations, common law uses (businesses using the mark without registration), domain name registrations, and foreign trademark registrations in key markets. The goal is to identify any prior user of a confusingly similar mark in a related field of goods or services. Adopting a mark without conducting a clearance search is risky: if a prior user with superior rights to a similar mark exists, you could be forced to rebrand entirely — a process that is costly in both direct expenses and lost brand equity — or face a trademark infringement lawsuit.
Registering a trademark is one of the smartest investments you can make as a business owner. A trademark protects your brand, gives you exclusive rights to use your mark in commerce, and provides significant legal advantages — including a presumption of ownership and the ability to bring infringement claims in federal court. But many business […]
Read more about Six Important Trademark Questions Answered
The USPTO’s failure-to-function doctrine rejects trademarks that don’t identify a unique source. Learn what causes these refusals, why distinctiveness matters, and how to choose a stronger mark.
Read more about Trademark Failure to Function: Why the USPTO Rejects Trademarks and How to Avoid It
If another business has registered your trademark, you may still have legal options. Learn how first-to-use rights, USPTO oppositions, and common law claims can protect your brand.
Read more about Trademark Already Registered by Someone Else? Your Legal Options