Made-up words are usually considered to be very strong and protectable trademarks, as the words will have no meaning or context outside of branding or marketing your product or service. In trademark law, these are often referred to as “arbitrary trademarks,” and they are highly favored for their distinctiveness.
If a word is first used to present a specific product or service to consumers, it will generate a stronger association with the product or service. However, if you make up a name that suggests the quality or characteristic of your goods and services, this is classed as a “suggestive” trademark. It suggests but does not describe a feature or characteristic of the type of product or service. For example, if you released a line of lipsticks and called them “LushLips,” while it’s a made-up word, it also suggests what the product might be. Suggestive marks aren’t as strong as arbitrary trademarks, which are completely made-up words, but they can still be protected.
Trademark words, whether made-up or suggestive, are a cornerstone of brand identity. The selection of a distinctive word or phrase can influence how well your business is protected under trademark law.
Is it Better to Trademark a Made-Up Word than an Existing Word?
It’s important to distinguish made-up words from other types of trademarks. Descriptive trademarks, which describe a feature or quality of the product, and generic trademarks, which are common terms for the product, are much harder to protect. A generic term cannot be trademarked at all, as it refers to the general type of product rather than indicating its source.
Trademarking a word or phrase also differs from copyright protection, which safeguards original creative works like books, music, or art. Copyright infringement occurs when someone uses a protected work without permission, but it does not apply to trademarks, which protect brand identifiers such as names, logos, and slogans.
Will Trademarking a Made-Up Word Protect it from Others Using it?
Trademarking a made-up word will not protect your made-up word from entering into everyday use, nor will it prevent speakers and writers from using the word in a way other than intended. For example, “Googling” has become a very common verb that refers to searching for information via Internet search engines.
Trademark protection is crucial for maintaining the legal rights of your brand. If you decide to trademark a made-up word, then you should have a thorough trademark search performed to ensure that there are no other prior-filed trademarks for similar made-up words. It is also advisable to have the made-up word evaluated by a trademark attorney in order to ascertain the strength of the particular trademark. We recommend that you contact us today if you’re looking to trademark a word, as it’s best to involve a trademark attorney as early as possible in the trademarking process.
Examples of these Trademarks
Several made-up words have become ubiquitous in modern language and were successfully trademarked. These strong trademarks highlight the importance of creativity in branding.
Kodak
The Eastman Kodak Company was founded in 1888, and eventually rose to become the dominant provider of cameras film.
At one point, the company was responsible for 90% of film sales, and 85% of camera sales (Source). Despite those staggering numbers, the shift to digital photography eventually drove the company into bankruptcy.
The word “Kodak” was first registered as a trademark in 1888. There has been some fanciful speculation, from time to time, on how the name was originated. But the plain truth is that Eastman invented it out of thin air.
He explained: “I devised the name myself. The letter ‘K’ had been a favorite with me — it seems a strong, incisive sort of letter. It became a question of trying out a great number of combinations of letters that made words starting and ending with ‘K.’ The word ‘Kodak’ is the result.” Eastman also selected Kodak’s distinctive yellow trade dress, which is widely known throughout the world. (Source)
Although based on the mathematics term “googol”, Google is a made-up word by the search engine giant.
Page and Brin originally nicknamed their new search engine “BackRub”, because the system checked backlinks to estimate the importance of a site. Eventually, they changed the name to Google; the name of the search engine originated from a misspelling of the word “googol”, the number 1 followed by 100 zeros, which was picked to signify that the search engine was intended to provide large quantities of information. (Source)
The “Google” trademark was originally filed on September 16, 1998.
Apple
Apple is another example of a strong trademark, although it is not a made-up word. The word “Apple” as used by the technology company is considered an arbitrary trademark because it has no direct connection to the products it represents, thus providing strong legal protection. The company has successfully secured federal trademark registration, reinforcing its brand identity in commerce.
How We Can Work Together
The Steps to Getting a Trademark on a Made-up Word
Step 1: Perform A Comprehensive Search
We will conduct a thorough trademark search to ensure your desired mark doesn’t closely resemble existing registered trademarks. Seeking an attorney’s help can aid in identifying both exact matches and “confusingly similar” marks, as they have access to various databases and can discern subtle distinctions. This helps protect the trademark owner from potential legal disputes.
Step 2: File the Trademark Application
After due diligence, we file a trademark application through the Trademark Electronic Application System (TEAS) or its alternative, TEAS Plus. The choice between these two can impact costs and requirements; we’ll provide guidance on this decision and help navigate the complexities. Filing the application correctly is crucial to avoid delays and rejections.
Step 3: Monitor Your Application
Once the application is submitted, expect a waiting period of 4 to 6 months for feedback from the United States Patent and Trademark Office (USPTO). While the initial response might be an approval, there’s a possibility of receiving an Office Action or denial, but amendments can typically be made and refiled. During this period, it’s important to monitor any updates and respond promptly to any inquiries.
Step 4: Finalize Your Registration
Upon application approval, the trademark will be published in the Trademark Official Gazette for 30 days, allowing potential opposition from other companies. If opposed, the case might proceed to the Trademark Trial and Appeal Board (TTAB). If unopposed, a certificate of registration will be issued, but ongoing maintenance is essential to preserve trademark rights. As a trademark holder, it’s important to enforce your rights and ensure continued use of the mark in commerce.
Service marks follow a similar process but are used to protect services rather than products. This distinction is important in various fields of commerce, where different types of marks — trademark or service mark — provide specific legal protection.
Wrapping Up
Hopefully, this article has provided a useful overview of all of the different aspects of trademarking made-up words. If you have any questions about starting the trademark process, selecting the appropriate phrases or descriptions for your trademark application, please feel free to call us at 1-866-618-2517 or contact us online.
