Monday, December 28, 2009

Suggestive Marks

One of our amazing researchers, Heather Roberts, took some time to write this article, which I'm extremely thankful as time has been limited as of late. Heather wrote a few more great articles that I'll be sharing during the rest of the week. Thanks Heather!

The strength of a particular trademark is gauged according to the Distinctiveness & Descriptiveness Continuum. To see a chart, click here.

What is a Suggestive Mark?

Here’s what the USPTO says: “Suggestive marks are those that, when applied to the goods or services at issue, require imagination, thought, or perception to reach a conclusion as to the nature of those goods or services. Thus, a suggestive term differs from a descriptive term, which immediately tells something about the goods or services...(SNO-RAKE held not merely descriptive of a snow-removal hand tool)...(QUIK-PRINT held merely descriptive of printing services)...(BUG MIST held merely descriptive of insecticide).

Suggestive marks, like fanciful and arbitrary marks, are registrable on the Principal Register without proof of secondary meaning. Therefore, a designation does not have to be devoid of all meaning in relation to the goods/services to be registrable.”
Basically, suggestive trademarks contain words or words that are seen as suggesting the product or service being offered but are not directly descriptive.

Should I Choose a Suggestive Mark?

While suggestive marks can walk the fine line of descriptive, it is certainly possible to find a suggestive mark that will lead your consumer to a certain conclusion of what product or service you offer by merely looking at the name.

While keeping in mind the issues of descriptive marks and making a conscious lean toward a suggestive mark, it will be something you’ll need to decide in terms of your industry, your customers, your competitors, your customers and your overall plans. Some of our clients really WANT to find a name that does the explaining for them in terms of what the service or product is at a glance at the name. Other times, our clients want something very unique without suggestion to the service or product within the name.

While Suggestive marks don’t necessarily “tell” a person what the product or service is, they do tend to make a very strong impression of what it might be. This may help cut down on explaining what the product or service is in the way or marketing, website content and advertising space.

What to Avoid When I Create a Mark:

Creative a suggestive mark is similar to that of creating a business name. You'll have to keep in mind all of the issues outlined above (industry, customers, plans, etc.). But when it comes to suggestive marks, don’t rely simply on spelling variations of a descriptive word or words associated with your product or service.

Because the USPTO will assign what is called a PSEUDOMARK when presented with a trademark application with unconventional spelling, this can be a curse to the success of your suggestive mark. We’ll explore PSEUDOMARKS in more detail another time, but what it means in laymen’s terms is that the USPTO is recognizing an unconventional spelling to mean a very conventional word or words.

As with the example shown above, the trademark Sno-Rake for a snow-removal hand tool is registrable on the Principal Registrar, however, if that description had read: “snow-removal rake” then the mark would likely be refused for being merely descriptive.

Here is a good rule of thumb:

* If any word or words of the suggestive mark also appear in the description of the product or service, even if spelled unconventionally, it is likely that the mark will be deemed descriptive.

If you want a suggestive mark, my suggestion (pun intended) is to put on your thinking cap, find variations on the name you’ve got in mind using a thesaurus and/or dictionary and play with variations of 2 or 3 word-combos. Always be sure to check your competition! If your competition has a variation on a suggestive mark that is similar to what you want to register, take heed as you don’t want your customers going to them on accident. Be creative, try out your choices on your friends and family, use them as your focus group and by all means, have fun with it! Happy suggestive mark hunting!

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1 comment:

Amy Cooper said...
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