RICHARD A. RYAN

TRADEMARK SELECTION

    Look for a name that is easily distinguishable from names that are used on similar
goods or services and which is or become identifiable to the target audience as coming
from you or your company.  Trademark protection cannot be obtained for marks that
are generic or highly descriptive for the product or service that you are selling or
providing with the mark.  In general, the more arbitrary, fanciful or suggestive a name is
the stronger the legal protection that can result from its use.  The paradox is that it is
also harder to develop name recognition for a product or service having an arbitrary or
fanciful name.  As a result, although arbitrary and fanciful names tend to be the
strongest, they will require more time and money (a balance of the two) to develop the
desired name recognition.  Therefore, it is generally best to use suggestive terms.

    The categories of trademark names are:

    
Generic: Name for what the goods are commonly known as or referred to by the
consuming public.  These names are in the public domain, therefore although you are
free to use them to describe your goods or services, you cannot obtain exclusive rights
to the name.  A couple of examples are "food store" for a grocery store and "apple"
for the fruit.

    
Descriptive: A name or term that describes the quality, ingredient, benefit,
component or other attribute of a good or service.  These marks cannot be registered
unless the user has acquired secondary meaning (acquired distinctiveness) for the
goods or services.  Secondary meaning is when the consuming public recognizes you
or your company as the source of the goods or services with that name.  Some
examples of descriptive names are "healthy fruit bar," "oat bran cereal," "fast lube," and
"reliable auto repair."

    
Suggestive: A name or term that is used to convey an impression or implied
meaning and which requires the consumer to use some amount of imagination to figure
out the goods or services.  A couple of examples are "Uncola," and "Orange Crush."

    
Arbitrary: A name or term that is used to describe a good or service that has no
relationship at all to the goods or services.  Some examples are "Apple" for computers,
"Malibu" for a car and "Rain Forest" for a restaurant.

    
Fanciful: These are made-up words that have no meaning in the English or other
languages. Some examples of registered trademarks are "Kodac," "Exxon," and
"Xerox."

    As an example, the word “Mercury” can include the following range of selections:

            Generic:  Mercury for the chemical
            Descriptive: Mercury switch
            Suggestive: Mercury Messenger Service
            Arbitrary: Ford Mercury (more arbitrary - Mercury Hotel)
            Fanciful - not available (its not a made-up word)

    In addition to the above, the person selecting a trademark should keep in mind that
the primary purpose of the trademark is to identify a product or service as coming
from a specific source (you or your company) so that persons will search out that
source when seeking to purchase the product or use the services.  Although highly
descriptive trademarks are more easily recognized as being associated with a certain
product, they are more difficult to protect.  Descriptive trademarks (such as Mercury
Switch for a mercury operated switch) require secondary meaning before the Patent
and Trademark Office or the courts will protect them.  To establish secondary meaning
requires a high level of proof that the consuming product recognizes the product as
coming from the source (you or your company).  In general this requires significant
time, investment and consistent use of the mark with the goods or services.

ATTORNEY AT LAW