4. Can any word be used as a trademark?
Yes and no. The essential function of a trademark is to identify the goods and services of one seller and distinguish them from those sold by all others. Put another way, a trademark is not supposed to tell you something about the product itself, but rather identify who produced it. A mark may therefore not be entitled to protection if it is determined to be (i) merely descriptive of the goods or services to which it relates, or (ii) the generic term for such goods or services.
A useful practical illustration for this rule would be the phrase DOMINO® GRANULATED SUGAR. The word DOMINO is a protectable trademark in this case, because it is used arbitrarily (i.e., without reference to its dictionary meaning) to identify the source or origin of the goods. GRANULATED is not protectable because it is descriptive of a characteristic of the product, and SUGAR is not protectable because it is generic – it is the dictionary word for what the product is.
Put another way, a generic term is one that is commonly understood and used as the name of a kind of good or service.
5. Can I register my own name as a trademark?
As a general rule, a mark which is primarily merely a surname is not entitled to registration on the federal Principal Register. The purpose of this rule is to prevent one person from monopolizing his surname in commerce and preventing others who happen to have the same last name from competing in their own name in the same line of business. Surnames are eligible for registration on the Supplemental Register, and can subsequently become eligible for Principal registration once the owner can prove that as a result of extensive use as a trademark (for at least five years), the name has come to be recognized by the public exclusively as a trademark of the applicant for its goods and not necessarily as a surname. This is how marks like FORD® for automobiles, TURNER® for entertainment and broadcasting services and KELLOGG® for cereals have become enforceable trademarks.
For example, in the phrase “XEROX® brand copiers,” the term COPIERS is generic and not protectable because it merely identifies a type of office machine, rather than the source of this particular office machine. Generic terms are never registrable or protectable as trademarks under any circumstances.
A mark is considered descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services. Hence in the brand name SANKA® DECAFFEINATED COFFEE, the term DECAFFEINATED is descriptive because is merely describes a non-unique characteristic or feature of the product. Geographical terms (such as “New England Clam Chowder”) are also considered descriptive in most cases, since it would be unfair for one competitor in a particular location to monopolize the name of that location and thereby prevent others in the area from telling customers where to find them. Similarly, laudatory terms like BETTER or SUPERIOR are also considered descriptive and not registrable.
The United States Patent & Trademark Office (“PTO”) will in most cases deny registration of a mark if it determines that the mark is descriptive or generic. The general rationale for this is that such terms merely tell the consumer about the product, but provide no information to the consumer about the identity of the actual source of this particular product in order to distinguish it from competing products. Further, it would be unfair and a restraint on competition to permit someone to monopolize words which its competitors legitimately need to use to describe their own goods.
Whether or not registration is obtained, marks which are relatively descriptive or generic are generally considered to be “weak” marks, which will be enforced, if at all, only within a narrow field. In order to gain the most protection, it is best to choose a “stronger” or more distinctive mark which is suggestive (hinting at the nature of the goods or services, or something about them, without describing them), arbitrary (totally unrelated to the goods or services), or fanciful (a symbol or coined word such as KODAK® or XEROX®). A common illustration of this spectrum of distinctiveness is the word APPLE, which would be generic for apples, descriptive for apple pies, suggestive for vitamins (“an Apple a day…”), and arbitrary for personal computers or a musical recording studio (both of which are actual trademarks).
This descriptive/distinctive dichotomy results in a constant battleground between the marketing professional, who understandably wants a name which immediately conveys to the consumer what the product or service is, and the trademark lawyer, who has to push the client away from such descriptive marks and toward something more distinctive that the PTO is more likely to accept and courts are more likely to enforce.