Trademarks can be the most valuable asset in an intellectual property (IP) portfolio. Names like “Coca-Cola”, “Amazon”, “Ford”, and “Apple” all define important products that have international recognition. These trademarks are what identify each of the products sold through the company associated with their names. The names don’t define an invention or a singular product, but rather the source of the goods that are being sold. Trademarks come in types of names, shapes, colors, sounds and many other identifying marks. The list of marks for goods and services can be found on the USPTO website.

To receive a registration of a trademark from the US Government the product or service must be in use and it must be available across state lines. Certain rules apply that must be met in order to receive a trademark. One very important one is that the mark must not be descriptive. A recent Court of Appeal for the Federal Circuit ruling (In re N.C. Lottery, (Fed. Cir. Aug. 10, 2017) ) the State of North Carolina lost its appeal of the Trademark Trial and Appeal Board ruling stating that the term “FIRST TUESDAY” was descriptive. It found that the NC Lottery included information that said that new scratch-off lottery games were available every “First Tuesday” of each month. The Court stated that the “commercial context demonstrated that a consumer would immediately understand the intended meaning of FIRST TUESDAY and that the mark is less an identifier of the source of goods than a description of a feature or characteristic of those goods or services.” This Court decision reminds us that a good trademark should be something that identifies the goods or services, but does not describe it.

Each of the trademark examples used earlier have one thing in common – they don’t describe the product. Coca-Cola being the closest while Apple and Amazon being the best examples of words/names that have nothing to do with the goods or services provided by those company identifiers. When creating a name it is good to think of something that is unique, does not describe the goods or service, but provides a strong identifying mark. One example that I have used to illustrate this this concept is for a clothing line that is always white. The name could be “vanilla”, it could have a hang tag that uses a vanilla bean and the label in the garment could be scratch-and-sniff with a vanilla scent. By using this combination there is a possibility of getting multiple trademarks for the name, for the vanilla bean logo and for the vanilla scent. Since Vanilla is not descriptive it could be a strong trademark for many years.

In another area of interest, the recent Supreme Court decision in Matal v. Tam allows for use of names for trademarks that were once considered disparaging under the Lanham Act. The Court found that “a provision of federal law prohibiting the registration of trademarks that may “disparage . . . or bring . . . into contemp[t] or disrepute” any “persons, living or dead” was unconstitutional. Simply stated “this provision violates the Free Speech Clause of the First Amendment. It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.” We don’t advocate using disparaging name for trademarks, but rather point out that this portion of the Lanham act is no longer applicable.

To take advantage of the valuable IP protection offered in a trademark you need to be creative. Don’t get caught in the rut of using a descriptive or semi-descriptive name for your product. Create something that is easy to remember and that can be unique to your product in the marketplace.