One of the most basic dilemmas of intellectual property law is the competing nature of a trademark. We lawyers want you to come up with a mark that will be considered “strong” because it doesn’t relate to the goods and services it’s applied to, and no one else is using it. On the other hand, for marketing purposes, business people often want a trademark, whether it identifies a product or a whole slew of services, to be easily understood by consumers. In other words, business people are anxious for consumers to draw the connection between the trademark and the good or service which it describes.
Sometimes it takes a little arm twisting, but between the army of branding folks I know and my counsel to clients, we are usually able to convince the client to come up with an “arbitrary and capricious” or “fanciful” trademark that they’re comfortable with. A “fanciful” mark is a word or design created for the sole purpose of functioning as a trademark and has no other meaning than acting as a mark. Fanciful marks are considered to be the strongest type of mark. Examples of fanciful marks are: ZAPPOS, XEROX, and EXXON. An “arbitrary” or “arbitrary and capricious” mark uses a word or design that has a common meaning but has no relation to the goods or services being sold. Examples of arbitrary marks include: APPLE devices and SUN computers.
Yes, using a random, made-up word or symbol that does not immediately jump out at someone as relating to the good or service on which it is applied might seem nutty, but I believe it’s worth it. The more random the mark is in connection with the goods and services, the stronger the mark. A strong mark should pass through the Patent and Trademark Office more quickly, be easy to defend against challenges, and assert against others who later begin using it or a confusingly similar mark. For instance, who would think of naming a dog Chilly? Yet, that’s his name. Do you think it’s trademarkable if I start manufacturing a line of stuffed animals named after him?
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