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Written by : Denny Dingus
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hi i'm experienced u.s trademark attorney morris turek people ask me all the time if it's possible to trademark a product name the answer is sometimes some categories of product names are eligible for federal trademark registration with the united states patent and trademark office while others are not in general the more unique and creative your product name is the easier it will be to register it as a trademark and the greater scope of protection it will receive let's first talk about generic product names if you're looking to trademark a product name choosing a generic product name would be disastrous under the law such a name receives no protection whatsoever and is ineligible for federal trademark registration under any circumstances for example if you intend to sell t-shirts under the name shirts spelled s-h-i-r-t-z you would be unable to protect that name because it's merely the phonetic equivalent of the english language word shirts which is the generic term for your products the downside to choosing a generic name for your product is that you cannot stop your competitors from using the exact same name for their products but the good news if you can call it that is that you never have to worry about being sued for trademark infringement and you don't have to spend any money conducting a federal trademark search or obtaining a us trademark registration now let's talk about descriptive product names a descriptive product name immediately describes a feature quality or characteristic of the product a good example would be the name rapid glue for a glue that dries quickly the problem with descriptive product names is that they receive a very narrow scope of protection and are initially not entitled to federal registration on the principal register although they may be allowed on the supplemental register generally speaking a descriptive product name must be in commercial use for at least five years and have acquired distinctiveness or secondary meaning before it's eligible for registration on the principal register so while descriptive product names tend to be popular because they tell consumers something desirable about the product they aren't a particularly good choice if you want a trademark registration or want to exclude others from using a somewhat similar name for the similar type of product now let's discuss something about suggested product names a suggested product name suggests something about the product for instance the name lava for a chili sauce would be considered a suggestive product name why because lava suggests that the chili sauce is burning hot another example would be sniffles for t for tissues most product names you'll come across in your daily life fall into this category unlike descriptive product names suggestive names are eligible for federal trademark registration right off the bat and receive a relatively broad spectrum of protection suggested product names are definitely a solid choice from a trademark standpoint now let's talk about arbitrary product names if you want to trademark a product name choosing an arbitrary product name would be a good idea an arbitrary product name is one that consists of a regular english language word applied in an unfamiliar manner for example if you wanted to use the word stapler for a tennis racket that would be an arbitrary use of the word stapler because tennis rackets don't perform the ordinary functions of a stapler arbitrary product names enjoy a broad scope of protection and are able to be federally registered with the uspto finally let's discuss fanciful product names a fanciful product name is one that's completely made up and has no meaning in the english language so the name yagzet for a brand of laundry detergent or really any product would be fanciful product name because it means absolutely nothing fanciful product names are eligible for federal registration and receive the greatest amount of protection under the law again i'm experienced u.s trademark attorney morris turek if you have any questions about whether you can trademark your particular product name please don't hesitate to contact me right away for your free consultation i look forward to hearing from you soon you
Thanks for your comment Shira Rene, have a nice day.
- Denny Dingus, Staff Member
hi Andy Nelson so I was in the grocery store last week walked out put my groceries away looked over at the cart returned and I saw this sign right here so you might want to push pause for a quick second take a look at this okay so what we have here we saw a better-tasting lite beer then michelob ultra and has a picture of saint archer gold which i think is least a local california beer I'm not sure if it's everywhere else but basically it's a diet beer okay and we all know michelob ultra is also a diet beer so when I saw that it made me think about my childhood I didn't a lot of you probably saw what I saw which is something called the Pepsi challenge which is a commercial on TV and you'd see people from the street walking up and invited to try a few different colas and pick which one they liked better and then it was the Pepsi challenge so as you can imagine there was the big reveal each time and so many people are surprised they chose Pepsi over coke and of course Pepsi uses to demonstrate or at least impress upon people if they have a better taste in Cola what we know as comparative advertising and over the years I've always been asked how can I do how can they do that how can they use Coke in their commercial that sort of thing think about it you see comparative advertising all the time and why do people do it because it's freakin awesome right it's really effective if done right and in fact it would be kind of ridiculous if the rule was you could not refer to your competitors trademarks let's say a Pepsi said hey today we're gonna have you know invite a number of people off the street to try our Pepsi versus a competitor's Cola that comes in a red can with white scripted lettering we're not gonna say what it is for fear that ringgit sued but that's you know you have to kind of infer what it is but that'd be kind of stupid and really there's no rule because remember trademark laws protect consumers from confusion in the marketplace they want to know where they're getting their products and when you refer to a competitor's product accurately you're not creating confusion so so naturally there is no problem so comparative advertising use of a competitor's marks that way is fair however there are some things you want to think about while you're doing it one want to make sure you don't butcher the competitors marks in some way you know mangle them different colors or whatever you mean you just you want to use it accurately number one - if if you use in comparative advertising you're gonna be making claims about something this one is a better tasting beard now that one is what we call puffing which is kind of like I'm the best beer on the planet kind of thing I don't know if you can really reduce that to some kind of scientific method just determine whether that's true or not so that sort of thing and probably okay I'm better than they are you know that kind of because consumers don't really then expect that to be nicely necessarily provable but you say I have 20% 25% fewer calories than coca-cola or something like that you better be ready to back that up if you got called to the carpet so don't mangle the marks use them accurately and don't be deceptive in some way and I don't have a good example for that but you know don't get too cute where you you know do something deceptive which is also you know along the same lines of make sure your claims are accurate and then ultimately I talked I talked about confusion a few months ago don't do anything that would sort of cause confusion or affiliation or something that wouldn't call or cause rather consumers to believe there's a connection or an affiliation you know make it clear that your competitors right you're not coming from the same source so there's more to it than that but but I know people always have this question which is how can they do that how can they talk about someone else think about it it happens all the time another one real quick before I get you off on this video is out here I think Best Buy is a retailer that's all over the US or has been and there was also a at least one in California called Fry's and I think there are in other states as well and Fry's used to run a funny little ad years ago on the radio and he used to say your best buys are always at Fry's not exactly comparative advertising not exactly using best buys trademark because they use it in a very descriptive sense to say your best buys put on the last very close to pushing the not deceptive not really comparative advertising unless you're kind of saying you're you know we're the better buy than Best Buy's I don't know anyway I'm circling the drain on that one that's just kind of a clever advertising method that they use that wasn't quite comparative advertising but certainly push the line anyway if you have questions about this video comparative advertising use of another competitor or competitor's trademark feel free to shoot me a message I look forward to talking to you soon bye bye
Thanks finalofantasyG your participation is very much appreciated
- Denny Dingus
About the author
I've studied comparative law at Principia College in Elsah and I am an expert in corrosion engineering. I usually feel drunk. My previous job was food batchmaker I held this position for 13 years, I love talking about stamp collecting and calf roping. Huge fan of Jill Wagner I practice japanese sword arts and collect casino chips.
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