Fanciful Trademark

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Fanciful Trademark

Fanciful trademarks provide the most trademark protection against infringement.  This is because it’s difficult for someone to claim accidental infringement or prior use of a truly unique identifier.

This doesn’t mean that fanciful trademarks can’t encounter legal issues. Others may try to piggyback on the brand’s success, and failure to stop this can lead to a loss of all rights.  Fanciful trademarks used in conjunction with novel products also create a greater likelihood that the trademark will become generic.

Fanciful Trademark Examples

While consumers may immediately link the following fanciful trademark examples to a specific product or service, this wouldn’t have always been the case. Before ‘Exxon’ was ever used to identify a brand, for instance, using the word would’ve conveyed no meaning to anyone. This is what makes these trademarks so distinctive.  They did not exist in the English language prior to use their use as a trademark.  The following are examples of fanciful trademarks:

  • Polaroid
  • Pepsi
  • Kodak
  • Clorox
  • Xerox
  • Rolex
  • Adidas
  • Verizon
  • Lexus

Fanciful Trademark Definition

Fanciful trademarks are something truly unique. The word or words were created solely for use by the brand. The word ‘Exxon,’ for instance, was listed in no dictionary or industry publication prior to its registration. The name exists only to identify a specific oil and gas corporation. This essentially makes it impossible for any competitor to claim prior use over the trademark.

In addition to this, there are a variety of other benefits of fanciful trademarks:

  • True exclusive rights: Exclusive rights over a trademark typically only apply within an industry. Thanks to rules regarding dilution, protections for fanciful identifiers may be more extensive.
  • The best you can get: While other types of trademarks can become strong over time, fanciful properties start out with prima facie
  • Avoid cybersquatting: Domain squatters have purchased countless internet URLs in hopes of selling them to a company who owns rights over a trademark. Creating a fanciful trademark lets you purchase these domains before your brand identifier becomes public knowledge.
  • Injunctions likely: Courts are more likely to issue an injunction if a fanciful trademark is infringed.

Any trademark that qualifies as fanciful is immediately considered inherently distinctive. It’s not necessary to build up a following in the market or even garner widespread public recognition. As long as it’s already being used in commerce or meets Intent to Use Trademark requirements, an application can be submitted and approved by the U.S. Patent and Trademark Office (USPTO).

Seek Immediate Protection

Some trademark owners don’t view immediately applying for trademark registration as a necessity. This is especially the case for those who want to use fanciful identifiers since there should be no competition for the name or design in question. In nearly every case, though, procrastination will prove risky.

Failing to apply for protection in a timely manner means opportunists may notice your usage prior to registration. Even if you’ve yet to engage in sufficient use in commerce, filing an application based on intent will protect your exclusive rights.

Any trademark that falls under the fanciful umbrella should have an easier time getting past a USPTO examining trademark attorney. And if it’s truly unique, it’s unlikely that anyone will have grounds to file a Trademark Opposition. This means there’s no excuse for not filing an application right away for any fanciful trademark you use or intend to use.

What is Inherent Distinctiveness?

Inherent distinctiveness is the ability of a trademark to immediately by recognized by consumers as a source indicator. Since these identifiers are completely unique, no one should potentially confuse them with the categories or descriptors of products and services. When people hear the word Pepsi, for instance, they immediately recognize it as a brand rather than a trait of beverage products.

Having this level of inherent distinctiveness can also make your trademark search much simpler. While these clearances should be done even in the case of fanciful identifiers, their truly unique nature can expedite a search. It will become apparent fairly quickly if a third party is already using the trademark.

Trademark Dilution

Trademark dilution is a form of infringement that requires no potential confusion on the part of consumers. If a paintball gun manufacturer began selling under the name ‘Lexus,’ for instance, customers would likely not confuse the two providers. Just by using such a unique brand identifier, though, it’s possible to diminish the strength, ingenuity and authority of the original.

When dilution merely takes away from the distinctiveness of the senior brand, it’s referred to as blurring. If a company uses a trademark in an unsavory way – or if they’re providing subpar products or services – tarnishment of the senior brand’s trademark could occur.

It’s not necessary to provide proof of actual instances of blurring or tarnishment. If blurring dilution is either potential or perceived, courts will typically side with the more senior brand identifier. Dilution is a particular problem for fanciful brand identifiers since third parties may want to profit from their success. Fortunately, protections exist against this form of trademark infringement.

Preventing Genericide

One of the major dangers faced by fanciful trademarks is genericide. This occurs when any protected brand identifier becomes equated to the entire relevant category of products or services. The word ‘thermos,’ for instance, was previously owned by a single company. Once people started using the word to describe all brands of insulated mugs, though, it was declared generic.

This is especially problematic for fanciful trademarks that represent the first use of a product or service type. If a patent registration doesn’t exist, there’s nothing to stop other brands from entering the market with similar offerings. If consumers use your fanciful identifier to describe subsequent brands – which is likely since your trademark once was the market – it could be declared generic.

The following are fanciful trademark examples that have fallen into generic usage over time. Although a single brand had ownership over all these terms at some point, they’re no longer protectable under American intellectual property laws.

  • Escalator
  • Aspirin
  • Yo-Yo
  • Dry Ice
  • Cellophane
  • Hovercraft
  • Laundromat
  • Teleprompter
  • Dumpster

Fanciful Trademarks Compared to other Types of Trademarks

Understanding the other types of trademarks available can help you recognize if your brand identifier is truly distinctive.

Arbitrary Trademarks

The protection offered by arbitrary trademarks is second only to their fanciful counterparts. Words that fall under the arbitrary umbrella already exist in consumers’ lexicon. Their use, however, is unrelated to the product or service itself. ‘Apple’ and ‘Coach’ are both examples since their names have nothing to do with the products being sold.

Suggestive Trademarks

When a term merely suggests a quality of a certain product or service, it’s considered a suggestive trademark. To qualify, though, a bit of imagination must be used on the part of consumers. ‘Android,’ for instance, suggests artificially intelligent software.

Descriptive Trademarks

When a trademark only describes a feature or some aspect of a product/service, it’s considered descriptive. This would include ‘Fast’ for fast food companies.

Some descriptive trademarks – such as ‘Sharp’ for televisions – have acquired distinctiveness over time. Until this happens, a brand identifier can only be listed on the USPTO’s secondary source of record, the Supplemental Register.

Generic Trademarks

Any word that merely identifies a category or type of product/service is considered generic. This includes ‘apparel,’ ‘computers’ or “candy”. Registering these as a brand identifier would hurt the marketing efforts of other companies within the industry. This is why generic trademarks are never registrable.

Trademark Type Confusion

While some types of brand identifiers are often confused – specifically arbitrary vs suggestive and descriptive vs generic – this should never occur with fanciful trademarks. As a truly unique source indicator, this form of trademark will not describe or even suggest a connection to products, services or the categories they fall under.

Contact Us

Please feel free to contact us if you have any issues related to a fanciful trademark.

 

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