A fanciful trademark is the strongest trademark type and, in addition to providing examples below, we define it as one that is “coined” for the purpose of serving as a trademark. Of the four types of trademarks, fanciful trademarks receive the most protection from trademark infringement since:
- they did not previously exist in connection with the sale of a good or service; and,
- carry no prior meaning.
Generally, there are four times of trademarks:
- Fanciful or Arbitrary
- Merely Descriptive
Interestingly, the courts lump together fanciful trademarks with “arbitrary” trademarks with respect to strength. In addition, fanciful marks are more likely to obtain trademark registration (i.e., get the “®”) before the United States Patent and Trademark Office (“USPTO”). In fact, due to their unique nature, the USPTO is less likely to Office Action for Likelihood of Confusion for a fanciful trademark.
Of course, that does not mean that these marks are immune from legal controversy. If a fanciful trademark becomes “famous” for a service or product, the associated fame and common use may cause “genericide” (i.e., death by generic use). Let’s go over some examples.
- Related: Trademark Classes
Table of contents
- 1. Fanciful Trademark Examples
- 2. Definition of “Fanciful Trademark”
- 3. Fanciful Trademark Benefits
- 4. Versus Other Trademarks
- 5. Conclusion and Recommendation
1. Fanciful Trademark Examples
Generally, there are fanciful trademarks abundant. For instance, you recognize KODAK as a camera manufacturer, ROLEX as a luxury watchmaker, and KLEENEX as a face tissue company. Here are just some fanciful trademark examples:
2. Definition of “Fanciful Trademark”
A fanciful trademark is a made-up or “coined” term, with no meaning, created for the “sole purpose of functioning as a trademark” that is unknown in the general vocabulary. As a refresher, a trademark is a word, design, or phrase that serves as a source identifier that distinguishes your goods and/or services from others. All goods and/or services fall into one of 45 different Classes (excluding special use case Classes).
- Related: What Are Trademarks
For instance, all of these names in the section above are fanciful marks because they are made-up words used to distinguish one set of goods from that of others. Here, the authors of each decided to create a term that would give their brand trademark protection, and, which consumers would associate over time with their product.
Fanciful Marks May Become Generic
A fanciful mark may become generic through overuse or misuse after several years. Because trademark protection cannot extend to generic marks, this is known as genericide – i.e., the death of a mark by generic use. For instance, certain words such as “aspirin,” “teflon,” and “escalator” which were once fanciful, became so commonly associated with a type of product that they are now excluded from trademark protection.
3. Fanciful Trademark Benefits
Filing a fanciful trademark comes with significant benefits, namely:
- Presumption of exclusivity: Because fanciful marks are coined, the is a presumption (i.e., an assumption) that the trademark owner began use first. This is helpful in infringement suits. In either case, it is harder for a judge or jury to believe the other party’s “accidental infringement” or prior use. This is a great segue to the next topic which is injunctive relief.
- Injunctive Relief: You have likely heard of money damages. In contrast, injunctive relief is only available when there is a likely risk of irreparable harm and money damages are not enough to make one party whole. Injunctive relief is a court order to do or not do something. In a trademark infringement action, courts are more likely to award fanciful trademark owners’ injunctive relief. The injunctive relief mandates, under the court’s contempt power, that the losing party stops their unlawful infringement.
- Strongest mark: While other types of marks may become stronger over time, arbitrary marks are strong from the get-go. This is due to two factors (1) inherent distinctiveness; and (2) their previous non-existence. A mark cannot get any stronger than this.
- Higher Chance of USPTO Registration: Since fanciful marks are unique, the search phase of the trademark examination process will result in fewer conflicts. While not immune to Likelihood of Confusion refusals, this means that these trademarks stand a greater chance of success at the USPTO.
- Related Service: USPTO Office Action Response
A. Inherent Distinctiveness
In addition, fanciful marks are “inherently distinctive” meaning that there is a presumption that by virtue of their unique characteristics, they are distinct. The only other trademark type that is inherently distinct is an arbitrary trademark, which we discuss below.
B. Issues with Fanciful Trademark Use
Of course, for every benefit, there are “cons” or negatives to consider. From a strictly legal perspective, a fanciful trademark is wonderful because it is unique. However, from a marketing standpoint, the fanciful marks present a challenge.
The challenge is the public’s ability to associate your mark with a given service or product. For some eCommerce entrepreneurs, this is a non-issue. For instance, this New York Times article discusses Amazon Registry Brands such as “RIVMOUNT, FRETREE, and MAJCF.” However, It is worth considering if you intend to build a brand. Yes, the strongest mark is likely punching random letters on a keyboard, but it does present significant barriers to building a worthwhile brand.
- Related: How Much Does a Trademark Cost?
4. Versus Other Trademarks
A. Fanciful Versus Arbitrary Trademarks
Here, an arbitrary mark is a with a meaning, but the meaning is unassociated with the product sold. An arbitrary mark uses a “[c]ommon word in an unfamiliar way. A fanciful mark is not a real word at all, but is invented for its use as a mark.” In contrast, a fanciful mark does not exist and has no meaning. The classic example is APPLE for computer services.
Some more examples
- BANANA REPUBLIC for retail store services featuring clothing
- WINDOWS for computer software
- DOVE for chocolate (or for that matter, for soap)
B. Fanciful Versus Suggestive Trademarks
A suggestive mark is one that “suggests the features of the product” or service from which the consumer can reach a conclusion about the product or service sold. Id.
- GREYHOUND for transportation services
- MICROSOFT for computer software
- AIRBUS for airline travel.
Basically, the consumer makes a logical leap from the trademark name to the product or service offered.
C. Fanciful Versus Merely Descriptive Trademarks
A merely descriptive trademark simply describes the “ingredient, quality, characteristic, function, feature, purpose, or use” of a product or service. As such, it is incapable of registering on the Principal Register and must be amended to the lower Supplemental Register. The USPTO generally disfavors merely descriptive marks. It is also the weakest mark that is registrable. These marks are capable of becoming “distinctive” overtime or through proof of acquiring “secondary meaning.”
D. Fanciful Versus Generic Trademarks
A generic trademark is incapable of trademark registration and clearly identifies the mark’s purpose, function, or use. Registration of a generic mark would effectively put out of business hundreds of brands. Examples include SAAS for software as a service, COMPANY for any type of business, or ELECTRONICS a computer store.
5. Conclusion and Recommendation
In conclusion, a fanciful trademark is the strongest type of trademark obtainable. A fanciful trademark is made solely for the purpose of registering a trademark. Because it does not previously exist and is coined, its uniqueness can help it stand out from the crowd. Other marks rely upon associations with an existing word and an unrelated product (arbitrary marks) or between a suggestive word and a product (suggestive mark). Some benefits include injunctive relief for trademark infringement and a greater chance to register the trademark at the USPTO.
Finally, I recommend reaching out to us regarding any trademark questions you may have or if you need help filing your fanciful trademark. I offer an easy, three-step process for filing your trademark online. Simply fill out this form, and I will reach out within hours to schedule your consultation, search, and trademark filing.