One of the biggest mistakes that I see in my practice is trademark applicants attempting to register descriptive names as trademarks. While it’s true that anything — including colors, scents, logos, words, and product designs — can serve as a trademark, we still have to ensure that the mark is not descriptive in the context of the goods or services. To illustrate this, let’s consider the mark FAT TIRE for beer and for bicycles.
FAT TIRE as a trademark is distinctive as to beer, but descriptive as to bicycles. This means that FAT TIRE can be used as a trademark for beer, but not for bicycles. When we evaluate a trademark and decide if it is “distinctive” or “descriptive,” we ask: “Does the trademark describe the goods, the purpose of the goods, the end to which the goods are used, or the end user of the goods?” If so, it’s very, very likely that the mark is “descriptive” as to the goods. We can’t make this determination in a vacuum; it’s always in the context of the goods and the mark.
As to beer, FAT TIRE does not describe any quality of the beer, the purpose of the beer, or an end to which the goods are used. If we’re using it to describe the end users of the beer, SPARE TIRE perhaps might be more appropriate, but not FAT TIRE. So as to beer, FAT TIRE is being used to arbitrarily distinguish the FAT TIRE beer from other beers. This distinctiveness makes it a good trademark.
As to bicycles, FAT TIRE describes a type of bicycle, commonly used for riding on snow-covered trails. Because the mark FAT TIRE describes a bicycle, it cannot serve as a trademark. A trademark grants the owner the exclusive right to use the mark on certain goods, so if one company owned the trademark to FAT TIRE for bicycles, it would prevent other manufacturers of fat tire bikes from fairly describing their goods. It would not allow them to say, “We manufacture fat tire bicycles.” So to avoid this, a trademark application for FAT TIRE for bicycles would be refused registration on the grounds that it is “merely descriptive” of the goods.
Anytime you’re considering a new trademark, it’s important to make sure that the mark isn’t descriptive. The best marks are “suggestive” of qualities of the goods and paint a picture for the consumer of the benefits or qualities of your goods or services.
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Contact Dallas, Texas trademark attorney Angela Langlotz today to get started on a trademark application for your valuable brand.