Descriptive Trademarks vs. Arbitrary or Fanciful Trademarks

We should take a moment to acknowledge a raging dispute between the trademark attorneys and the marketing and search engine community.

The trademark attorneys and the marketing and search engine optimizing communities are at odds.  Trademark attorneys encourage businesses to adopt unique, arbitrary and fanciful word marks whereas the marketing and search engine optimizing professionals often encourage businesses to adopt descriptive business names and matching descriptive website URLs to maximize search engine optimization.  This is one approach and it’s hard to argue with maximizing search engine results, however, adopting a descriptive company name and URL undermines the business goal of developing a strong and highly valuable trademark because descriptive and generic phrases cannot be registered as trademarks on the Federal Register, and this is where all the best and most valuable trademarks are registered.

For example, if a business owner intends to provide high quality landscaping services, it cannot register the words HIGH QUALITY LANDSCAPING as a trademark on the Principal Register.  The law of trademarks is grounded in fair competition and permits all landscapers to use this phrase to describe their landscaping services; the policy is that no single company should be permitted to exclusively own and use the HIGH QUALITY LANDSCAPING.

The best word trademarks and service marks are arbitrary and fanciful.  A fanciful mark is a made up, or coined term, that had no meaning before its use as a trademark.  For example, when you seen the terms, COCA-COLA and EXXON, only two companies comes to mind.  These are both very strong trademarks and fanciful marks are afforded a greater scope of protection.  Similarly, when you see the letters UPS, only one company comes to mind.  This is a very strong service mark.   An arbitrary mark is an existing word that has come to indentify the company or product.   For instance, the words MUSTANG and JAGUAR have become trademarks for certain automobiles. 

Here are more examples of arbitrary and fanciful marks.

Examples of Fanciful Marks (coined terms that had no meaning before trademark use)

VERIZON (cell phone)
POLAROID (cameras)
PEMCO (insurance)
OREO (cookies)
LEXIS/NEXIS (legal research tool)
KODAK (camera)
XEROX (copies)
EXXON (gasoline)
HARPO (for Oprah Winfrey’s company)

Examples of Arbitrary Marks (existing words that have come to identify the company)
AMAZON (online retailer)
YAHOO! (search engine)
BING (search engine)
GOOGLE (search engine)
SUN (computers)
CANNON (copiers)
DOMINO’S (pizza)
DOMINO (sugar)
APPLE (computers)
NICKELODEON (cable television network)
COMET (kitchen cleaner)
SHELL (gasoline)

The goal is to come up an arbitrary or fanciful marks for your company, products and services.  Doing so will add the greatest value to your company, and this will offer your business a broader scope of trademark protection. ​