Nowadays, in addition to “maker” and “brand”, “product name” is increasingly used as a trademark. There are simply so many product types and variations. Take a look at an example below:

GREEN CLEAN is a product name of a cleanser from Farmacy Beauty. My impress is that it is something that naturally cleans your skin. It feels natural because of the word GREEN, and I can assume it is a cleansing product because of the word CLEAN.

Well, this type of phrases well serve the purpose of explaining what the product is in addition to telling it apart from competitors’. However, because of the former, there’s limited protection.

Descriptive phrases

When your product name simply describes what it is, this cannot be registered on Principal Register but instead you may place it on Supplemental Register, which kind of serves as a waiting list to be registered on Principal Register.

GREEN CLEAN is no different as belows.

Why people or companies bother to register their marks on Supplemental Register? It still is a register, and it affords you the right to put ® symbol next to your product name. Other than that, it's a great stepping stone to later register on Principal Register.

Tough luck if…

You may be denied of registration altogether on both principal and supplemental register if your description is deceptive. For example, if you want to use the surname Obama for your book club, the USPTO would certainly refuse to register a name such as OBAMA BOOK CLUB.

When the description might deceive consumers or defraud them, it simply is not a trademarkable name.

In reality, though, you will face more issues with characteristics and features of your product or service. For example, let’s say you name your clothing brand SILK THE EXTRA ORDINARY. Then, the USPTO might want to confirm if your clothing is actually made of silk.

Not a ban

You can definitely use SILK for your soy milk product.

Using a descriptive word in a non-descriptive way is actually a great way to create something distinctive without much creativity.

Of course there are other ways. For example, SILKY may convey a similar meaning while avoiding deception. EXTRA ORDINARILY SILKY may not trigger the same rejection as SILK THE EXTRA ORDINARY though it’s very similar.

Another example is COPY CALF for artificial leather goods. Although it is not made of CALF, the addition of COPY made it not deceptive.

It was an obvious play on the expression “copy cat” and suggested to purchasers that the goods were imitations of items made of calf skin.

A. F. Gallun & Sons Corp. v. Aristocrat Leather Prods., Inc., 135 USPQ 459 (TTAB 1962).

Last words

As always, trademark law looks at the perception of consumers, and therefore it’s very subjective. So, you can simply look at a wording to figure out if it’s a good trademark. You should take account of the market/industry, target consumers, and product features together with the wording itself.

There are mainly two types of trademark, a standard one and a stylized one.

A standard one (called a standard character mark) establishes your trademark rights to the written words of the mark whereas a stylized one (called a stylized/design mark) to the expression of the words in a certain way.

For example, “Coca-Cola” is a brand name of a certain soda drink, registered to the Coca-Cola Company. But you more often see the name in a particular style as shown here.

Nowadays, the use of stylized logos and designs is very common because it effectively sets apart the company/brand from competitors’.

A common choice is Standard Character.

Although virtually all companies use at least some design/style elements in their trademark, still most of the companies register their trademark in a standard character format. Why?

1. They don’t want their trademark right to be limited to a specific design. In fact, if you registered your brand name in a standard character format, any style/design of that registered name can’t be used by your competitors.
2. Also, once registered as a stylized/design mark you can’t change the design or style of the mark. Companies often update their design and style elements to modernize them.

Thus, it’s is a rule of thumb that a standard character format affords a better protection.

A Styled/Design Mark works a bit differently.

Let’s say IPfever registered a stylized trademark: After a few years, a website devoted to teaching Japanese language and culture dubs itself Japanese Fever, “JP fever” in short, and starts using this logo:.

Do you see any problem? Although they changed a letter, they look too similar. There’s likely an infringement case.

However, if IPfever were registered as standard character, it would’ve been a different story. Because “fever” in Japanese Fever can be considered as a descriptive word for passion and enthusiasm for Japanese culture, it likely has a leeway.

But it should be noted that stylized/design marks have their own limitation. If Japanese Fever  , I say this one differs in style so much to escape from a potential trademark infringement claim.

You have to choose, but choose wisely.

You might say you would just register both standard character and design marks. Problem solved? Well, it’s not that simple.

You can’t claim “the coffee house” trademark for your coffee house because that’s what people call any coffee house. It’s reserved for everyone. But you may register this stylized/design mark.

You probably need to disclaim rights to the words, (meaning that others can literally use the same name) but it still protects you from something like this knock-off.

So, figure out what’s the strength and weakness of your mark, and then choose wisely.

Let’s take a look at an interesting story:

By the time Apple Inc. debuted iPhone in January 2007, the prefix “i” had already become a thing of Apple. The inauguration of iMac series dates back in 1998. In 2003, iPod was a mega hit.

Lesser known than Apple, however, there was a startup called InfoGear Technology Corporation, which developed an internet phone technology, called “iPhone.”

Yes, iPhone™ by InfoGear.

Of course, there’s nothing suspicious about Apple’s iMac; the iMac trademark was first registered in 1995 by Digi International Inc. which assigned the trademark to Apple in 1998. Here, Apple did a right thing; it bought the iMac trademark before announcing iMac.

But, how about iPhone? Based on the USPTO’s record, InfoGear used the iPhone trademark from 1997, and it was registered in 1999. Apple filed its iPhone trademark application in January 8th, 2007. (Steve Jobs unveiled iPhone to the world the next day).

Can Apple do that? Absolutely “NO” said Cisco who brought a lawsuit against Apple based on its iPhone trademark purchased along with InfoGear.

In all fairness, if Cisco proved its seriousness about iPhone in the court, we might now have “iPod 4G LTE Advanced” instead of “iPhone 7.”

Who knows what Steve Jobs said to Cisco, but Cisco somehow agreed to a concurrent use of the iPhone trademark. (Apple probably challenged Cisco’s iPhone trademark by saying that “i” prefix had been associated with Apple product even before Cisco’s registration.) Well, assuming Cisco had a valid and enforceable trademark right, what could’ve happened?

Cisco would say the iPhones sold by InfoGear and Apple were both communication devices, and customers would likely be confused. Of course, Apple would say they are totally different devices; but Apple likely loses on this account.

As a counter, Apple could’ve argued that Cisco stopped using the trademark (thereby lost its right). Then, the followings become relevant: How many iPhone Cisco sold? How many people bought, used, knew or seen iPhone by Cisco? Had Cisco advertised iPhone? My guess is that Cisco purchased the iPhone trademark, but it really didn’t think about using it much.

So, be aware that to own a trademark, you have to actually use it, which means placing your goods/services (bearing that mark) in the market.

Trademark registration provides security. For example, companies often file intent-to-use (“ITU”) applications before making and selling new products. Without the ITU, mobile phone companies won’t be able to announce a flagship model months earlier than actual release, nor can they push an advertising campaign for a new product before they make sales. (Announcing or even advertising is not enough to establish a use of trademark under the trademark law.)

Trademark registration provides security. For example, companies often file intent-to-use (“ITU”) applications before making and selling new products. Without the ITU, mobile phone companies won’t be able to announce a flagship model months earlier than actual release, nor can they push an advertising campaign for a new product before they make sales. (Announcing or even advertising is not enough to establish a use of trademark under the trademark law.)