1. What Is an Arbitrary Trademark?
2. What Isn't an Arbitrary Trademark?
3. Why Use an Arbitrary Trademark?
4. Why Avoid an Arbitrary Trademark?
5. How to Choose the Right Arbitrary Trademark

What Is an Arbitrary Trademark?

An arbitrary trademark is a word or image that already exists, but it has nothing to do with the business that uses it. Apple Computers is one of the classic examples, since iPhones and laptops have nothing to do with fruit or cider. Shell gas stations and Camel cigarettes are other good examples. The arbitrary trademark is one of five trademark categories recognized by the USPTO. 

What Isn't an Arbitrary Trademark?

To really know what an arbitrary trademark is, it helps to understand the other four categories.

  • Fanciful Trademarks (sometimes called coined trademarks) use words or images that don't mean anything. This lets companies have the full protection of U.S. trademark law. After all, no one has a reason to use a made-up word except the company. This means they're stronger than arbitrary trademarks, too. The most well-known example would have to be "Kodak," which George Eastman made up for his camera and film company because he liked the hard K sounds. Most drug names are also made up, like Tylenol, Advil, and Percocet.
  • Suggestive Trademarks can be made-up or real words or images, but in this case the mark suggests something about the company's products. For instance, the company Microsoft produces software, so there's a connection. The Greyhound bus company took the name of a fast dog breed to suggest speed, and Timex watches have the word "time" in their name. Suggestive trademarks are weaker than arbitrary trademarks, but the USPTO still considers them to be strong marks.
  • Descriptive Trademarks get right to the point by describing a company's products. However, this means they don't get as much protection from trademark laws. This is because it's possible for someone to use the trademarked word or image to describe a different product. For example, some reviewers use the term "best buy" to describe good products, but you don't have to visit a Best Buy store to buy them. Companies named after their founders, like Ford Motors, also use descriptive trademarks. This is because a man named George Ford could own a motor and call it Ford's Motor.
  • Generic Trademarks aren't trademarks at all, or at least they aren't protected by trademark law. This means that everyone can use the word or image without any problems. That's why you can print a picture of apples on the side of an apple bag without asking Apple Computers first. It's also why Apple can't sell real apples and force everyone else to call theirs "crispy fruit."

Why Use an Arbitrary Trademark?

In terms of trademark strength, arbitrary marks sit between fanciful and suggestive marks. Every company wants as much trademark protection as possible, but there are reasons why fanciful marks aren't always the best idea. The biggest problem is that the company has to build the name up from nothing. The word doesn't mean anything and doesn't suggest anything about the company or product, so it's harder for people to remember.

Arbitrary trademarks don't have this problem. "Apple" already has a meaning, so all Steve Jobs had to do was make sure people thought of his company, too. Galaxy phones have nothing to do with the Milky Way, but your friends know what you mean when you say, "I'll text you on my Galaxy."

Another benefit of arbitrary trademarks is that they're less likely to suffer from "genericide." "Genericide" means that a trademarked word is so generic that the company can't keep others from using it anymore. Genericide can happen to any product that dominates its market, but it's more likely to happen to fanciful marks because they don't have a real meaning. Brands hit by genericide include the escalator, the thermos, and the yo-yo, and brands at risk include Bubble Wrap, Rollerblade, and Frisbee.

Arbitrary trademarks also have a head start when it comes to "secondary meanings." For the government to protect a trademark, the company that owns it has to prove that the public can connect the word to the company and not just its regular meaning. "Camel" is a kind of desert animal, and the cigarette brand is the word's secondary meaning. That's nice and clear. However, if you name your dairy company "Creamy Milk Butter," you'd have a hard time getting people to think of your company first.

Why Avoid an Arbitrary Trademark?

The biggest problem with using words that already exist is that other people might have used them first. Apple Computers is a great example of this, too. Back when Steve Jobs was still in middle school, the Beatles created a record label and named it Apple Corps. Both companies would go on to spend years and millions of dollars arguing over that single word.

Also, there are reasons a company might want to choose a weaker trademark instead. Using your last name for the company is easy to remember, distinctive, and it gives your products a personal touch. Using a first name, like Uncle Ben's rice and Aunt Jemima syrup, gives a product a homemade feel you can't get from a random or made-up word.

"Holiday Inn" sounds like a nice place to stay for a long weekend, but "Cranberry Inn" just sounds random. Cranberry Inn would have to spend years marketing itself just to get to where Holiday Inn starts.

How to Choose the Right Arbitrary Trademark

The way the story goes, Steve Jobs named his company on a whim. This means he could have avoided all those lawsuits if he had only done some research and picked "Peach" or "Plum" instead. Unfortunately, Jobs didn't know just how important his name choice would become, and his company would pay the price.

Picking good company and brand names isn't just important, it's important to do right away. A lot of a company's reputation sits on its name, and it can be very hard to bring customers back after changing it. Food companies regularly have trouble keeping customers after changing nothing but their package designs.

Something else you should understand is that arbitrary trademarks don't have to be "arbitrary" at all. Even if your company's name has nothing to do with your industry, it can still say something about your identity. Rockstar and Red Bull energy drinks don't have anything to do with playing music or cows, but their names are fun and energetic. You can do the same thing by picking an arbitrary trademark that has nothing to do with your products but everything to do with your public image. Brainstorm words that describe feelings, ideas, and imagery that you want your product to evoke in consumers. It can also be helpful to learn what keywords potential customers use in search engines when they're trying to find a product or service like yours. 

You should keep track of what kind of trademarks your competition is using. If arbitrary trademarks are common, using one can help you fit in with the crowd. On the other hand, using an arbitrary trademark when no one else does will make you stand out, but it can also make customers more cautious about buying your products.

Branding is key, but it's just as important to pick the right words and images for your brands. An arbitrary trademark might sound random, but it will pay off down the line to put in the research up front.

UpCounsel's marketplace connects businesses with experienced lawyers and trademark attorneys who can give you the expert legal advice and research a startup needs to make the right first impression.