What Are Fanciful Trademarks?

Fanciful trademarks are made-up terms invented for the single purpose of functioning as a trademark. They can be either neologisms (words that don't mean anything in the English language) or archaic words that are out of common usage.

A fanciful trademark is distinctive and only has a meaning when used in relation to a specific product. For this reason, fanciful marks are the strongest type of trademarks.

Famous examples of fanciful trademarks include Exxon, Kodak, Pepsi, Clorox, and Xerox.

Understanding the Strength of Trademarks

A term is considered a trademark and receives protection only when it's distinctive. The public needs to able to distinguish the mark associated with your product from the goods of your competitors. The more distinctive a trademark is, the stronger it is.
A mark can fall into five categories, from the most distinctive (and strongest) to the least distinctive:

  • Fanciful marks
  • Arbitrary marks

Arbitrary marks are real words with a meaning that isn't associated with the product sold. An example is the Apple trademark. An apple is a type of fruit, and it couldn't be used as a trademark in the agricultural sector. However, it can be registered as a trademark in association with the computer sector.

  • Suggestive marks

A suggestive mark is an allusive word that suggests a characteristic of the product or service that is sold. However, suggestive marks are different from descriptive ones because the consumer has to use a little imagination to understand what the product is. Examples of suggestive marks include Microsoft (software for microcomputers), Citibank (financial services), and Jaguar (cars).

  • Descriptive marks

Descriptive marks are words that merely describe the product they are associated with. Since a customer can't identify the specific product with such a mark, descriptive marks aren't considered trademarks. They can't receive any protection unless they acquire secondary meaning, which usually takes a long time, if it happens at all. Examples of descriptive marks are "104 Key" (computer keyboards have 104 keys) and "deep bowl."

United States trademark law treats surnames exactly as if they were descriptive marks. A trademark is considered "primarily a surname" if the public doesn't immediately identify it with a product or service. Surnames as marks aren't granted protection unless they've acquired a secondary meaning over time. In this case, the trademark is protected and no one can use it for another product. An example is the surname "McDonald." A man named Bob MacDonald couldn't open a restaurant and call it "McDonald's," no matter if that's his surname, because "McDonald's" has acquired a secondary meaning and is thus a protected trademark.

  • Generic marks

Generic marks are words that define a product, for example, "smartphone," "email," or "bread." Generic words cannot be trademarks. The federal government​ has in fact determined that no one can have exclusive rights to a word of common use.

When Fanciful Trademarks Become Generic

Fanciful trademarks are the strongest marks, but sometimes after many years, they can become generic marks. This is known as " genericity": a word that was once a unique trademark has become so common that people use it for generic items that are not the original product.

"Aspirin," "Linoleum," and "Elevator" are examples of genericity. The trademark "Google" might also become generic soon, as people use the verb "to google" when talking about searching the web, no matter which search engine they use.

How to Choose the Right Trademark

Your trademark could become your most treasured asset. Choosing the right trademark is essential since your choice will have important consequences for your business.

Consider looking for a good trademark attorney that can help you choose the perfect trademark. A trademark lawyer will make sure your trademark is protected under the common law trademark rights. He/she will also decide if you should register your trademark in the Patent and Trademark Office.

Here are a few general tips on how to choose a good trademark:

  • Choose a mark that is as distinctive as possible, such as fanciful or arbitrary trademarks
  • Avoid any marks that are similar to another mark in your same class of product or service
  • Don't go for generic or merely descriptive terms, because they can't be registered as trademarks. Keep in mind that with generic marks, it doesn't matter if the term is an existing or a made-up word. For example, Apple was able to register its mark related to computers even though "apple" is a real word, but made-up words that are closely related to a family of products cannot be registered (such as "boygear").
  • Avoid suggestive trademarks that could easily be mistaken for merely descriptive trademarks that are not registrable
  • Don't choose any mark which contains obscenities, which you can't register

Tips for Creating a Good Fanciful Trademark

Creating the perfect fanciful trademark means finding the "feeling" that you want your brand to bring to consumers. George Eastman, who created the Kodak trademark, said that a good trademark should be meaningless, short, easily spelled, and vigorous.

If you prefer using an archaic word, look through an archaic word dictionary until you find the right word. If you want to make up a new word, have fun combining letters that sound well together. Pharmaceutical companies often use the letters V, X, and Z. Here are some other things you can do to come up with the right word:

  • List all the adjectives that you want your customers to relate to your product and brand
  • Look at your competitors' trademarks. What are common sounds used in your sector? What terms do people search for online when looking for your competitors' products?
  • Answer these questions: What is the feeling that you want your product to convey? Is your brand young and fun? Is it formal? Think of your business as a real person. This will help you come up with the right sound.

Reasons to Consider Using a Fanciful Trademark

There are many reasons that choosing a fanciful trademark is often your best choice:

  • Fanciful trademarks are absolutely distinctive since they have no meaning. A trademark is stronger when the mark has no connection with the characteristics of the related product because customers can create a stronger association of the mark with your brand. This is particularly true for new companies with a unique business model and a large marketing budget.
  • Because of their distinctiveness, fanciful marks are ideal from a legal standpoint and are the strongest kind of trademarks. Choosing a fanciful mark gives you the exclusive right to its use. It's easy to prevent competitors from using it and profiting from it.
  • In the event of a trademark infringement or a cybersquatting dispute, a fanciful trademark holder is in a strong position to retain it. On the other hand, generic and descriptive trademarks aren't strong and can't be protected against third-party use. Suggestive trademarks are also a weaker choice than fanciful ones because there is a fine line between suggestive and merely descriptive trademarks.
  • If a competitor tries to use a slight variation of your fanciful trademark, the court usually sees this practice as more confusing to the customers than when the competing marks are defined words similar in their sound. Similar fanciful trademarks are usually considered a trademark infringement.

Reasons to Consider Not Using Fanciful Trademarks

While fanciful marks are the strongest type of trademarks, there is a downside that you should definitely consider.

Since fanciful marks are distinctive, they don't tell your prospective customers what your product is. You will have to educate your public before they'll be able to associate your product with the mark. To do so, you'll have to put aside a significant advertising and marketing budget, which isn't feasible for all businesses.

What to Do If You Are Accused of Trademark Infringement

It's a scary moment when you receive a cease and desist letter. First of all, you need to understand whether the accuser has a case.

The accusation can be of trademark infringement, cybersquatting, or trademark dilution. Cybersquatting means choosing a domain name with the purpose of profiting from someone else's trademark. Trademark dilution means using a trademark and worsening its owner's reputation.

In the case of trademark infringement, your accuser will need to prove that he/she is the legitimate mark holder and that your mark is confusing to customers. It's easier to prove trademark infringement when the mark is fanciful since it's inherently distinctive. If this is your case, the accuser can probably win the lawsuit, and you should look for a good trademark lawyer.

It's a different case if you have used a trademark with the sole purpose of commenting on it or using it in an artistic way. In fact, under the First Amendment, the court protects the public's right to use trademarks for such purposes.

Fanciful trademarks are the strongest type of marks and are often a good choice for businesses. When choosing a trademark, it is essential to consider the long-term issues.

If you need help filing your fanciful trademark, you can post your question or concern on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Stripe, and Twilio.