What’s in a name?: business-friendly trademark counselling in the startup scene

Trademark counselling has become more practical and business-friendly because of the expansion of technology and a somewhat saturated market, particularly in connection with emerging companies with (at least initially) limited resources.

Choosing a trademark can be a delicate balance between art and science. Trademark registrability is determined on a spectrum of distinctiveness, ranging from fanciful to generic terms (Table 1). Fanciful marks, which have no meaning, are the most distinctive and are awarded the broadest scope of protection. On the other end of the spectrum, generic terms that merely describe the particular class of the underlying products/services, eg, the mark ‘APP’ for a mobile app, are not protectable as trademarks.

Arbitrary, suggestive, and descriptive terms fall between the two ends of the spectrum. Descriptive terms are protectable only upon a showing of secondary meaning, or “acquired distinctiveness”.

Table 1: The spectrum of distinctiveness