What Can Happen if Your Trademark is too Generic or Descriptive?
When starting a business, choosing the perfect name is one of the most exciting and crucial decisions you’ll make. You want a name that tells customers what you do, is easy to remember, and stands out in the marketplace. Here’s the catch: if your name is too generic or merely descriptive, you could be walking straight into a trademark trap that leaves you legally vulnerable and unprotected.
You don’t have to be practiced at the art of deception and have an infringing name to be denied trademark protection. Many business owners don’t realize this issue until it’s too late. Imagine investing thousands in branding, signage, and marketing only to discover that your business name can’t be legally protected. Worse yet, a competitor could use the same or a similar name, and you’d have no legal recourse.
No Security: Why Generic and Descriptive Names Are a Problem for Trademarks
The U.S. Patent and Trademark Office (USPTO) won’t grant trademark protection to business names that are purely generic (e.g., “The Coffee Shop” for a café) or merely descriptive without acquired distinctiveness (e.g., “Cold & Refreshing” for a bottled water brand). Here’s why:
- Generic Names Can’t Be Owned. A generic term is simply the common name for a product or service. No one business can claim exclusive rights to “Pizza Restaurant” or “Lawn Care Services” because those terms must remain available for everyone in the industry to use. You can have those in your name, but you’d better also have something non-generic and non-descriptive with them, like “Bluebird Pizza Restaurant” (unless you are in a town named Bluebird, because locations are also a no-go as generic).
- Descriptive Names Are Weak. A name that merely describes the goods or services, like “Tasty Burgers” for a fast-food joint, will face serious hurdles in the trademark process. The USPTO may reject it unless you can prove that customers associate the name specifically with your business over time (which often requires years of strong marketing and consumer recognition).
Take the case of Booking.com. Initially, “booking” was deemed too generic to trademark. However, the company was able to prove through extensive evidence that consumers recognized “Booking.com” as a distinct brand rather than just a category of service. This is an exception, not the rule; most businesses don’t have the resources to establish this level of brand recognition, especially at the beginning.
(This discussion of generic trademarks is different from how a trademark can become generic, which is known as genericide. That’s a topic for another post.)
Mr. Pitiful: Why Last Names Can Be Trademark Trouble
Many businesses are named after their founders, but if your business name is primarily a surname, you could run into trademark challenges. The USPTO generally considers surnames to be not inherently distinctive, meaning they don’t qualify for trademark protection unless you can prove that the mark is more than just a surname.
For example, “Jagger’s Bakery” or “Richards Consulting” may not be eligible for trademark registration unless you can demonstrate one of the following:
- Consumers associate that surname specifically with your business, rather than just recognizing it as a common last name;
- The mark has a secondary meaning, like King standing for the concept of royalty or being the biggest or best, like “I’m a King Bee,” not just being my last name; or
- There are other important words in the mark that make the mark more than just a surname (these have to be words that aren’t generic or descriptive terms).
Big brands like McDonald’s and Ford successfully registered their names because they built strong brand recognition over time, but new businesses using common surnames will face an uphill battle in securing exclusive rights.
It’s Not All Doom and Gloom: The Supplemental Register
Can You Get Trademark Registration for a Name that Is Generic, Descriptive, or a Surname?
Sometimes, a mark that suffers from the ailment of being generic, descriptive, or primarily a surname (or some other problems) can be registered on the USPTO’s Supplemental Register, which is like the opening band before the main act (or the junior varsity team if you prefer a sports metaphor). It doesn’t give you the full rights being on the Main Register does, but it’s better than having no kind of registration. Then, over time, the mark may gain enough fame to qualify to be on the Main Register.
It’s far better, though, if you can, to start with a name that qualifies for the Main Register.
What to Do: How to Choose a Strong, Protectable Business Name
To avoid these pitfalls, aim for names that are suggestive, arbitrary, or fanciful:
- Suggestive: Hints at what you do without being too obvious (e.g., “Netflix” suggests movies but isn’t just “Online Movie Rentals”)
- Arbitrary: A common word used in an unrelated context (e.g., “Apple” for computers)
- Fanciful: A completely made-up word (e.g., “Xerox,” “Kodak,” or “Nanker Phelge”)
A great business name isn’t just catchy; it’s legally strong. Before committing to a name, conduct a trademark search and consult an intellectual property attorney to ensure you’re building your brand on solid legal ground
Do As I Say, Not As I Do!
You may have noticed I’ve utterly failed to have a business name that meets these requirements. Maybe I could get away with “King” as noted before, but “Patent and Business Law” is flat-out descriptive. Combining those isn’t enough, either. I could try for Supplemental Register registration and then wait to see if I could ever qualify for the Main Register. Sometimes it’s ok to have a name that isn’t suitable for registered trademark protection, but it should always be an informed decision.
Law firm names are often descriptive on purpose to help potential clients find the right kind of attorney, and most states have strict rules about what can and can’t be in a firm’s name.
That said, Illinois lets law firms have plenty of leeway with their names, so if anyone has any good fanciful yet practical ideas, I’d love to hear them!
You Can't Always Get What You Want, But If You Try Sometimes, Well, You Just Might Find You Get What You Need
A great business name isn’t just catchy; it’s legally strong. Before committing to a name, conduct a trademark search and consult an intellectual property attorney to ensure you’re building your brand on solid legal ground, because when it comes to trademarks, you can’t always get what you want . . . but with the right strategy, you just might get what you need.
(Deep apologies to the Rolling Stones for butchering their song titles in the name of trademark education! As another aside, the wordplay in this post is for my dad, who loved the Stones and took me to see them twice when I was in law school and a fledgling attorney and who inspired me to become a lawyer in the first place through his arbitration and mediation work.)
Want to make sure your business name is legally safe? An experienced trademark attorney can help you avoid costly mistakes before they happen.
If you’re launching, growing, or just unsure whether your business/brand name or your logo are truly protected, let’s talk. I help entrepreneurs across the U.S. make smart, legally sound decisions about names and logos.
If you’d like to consult with me, you can use my contact form or book a consultation online at kingpatentlaw.com or by calling my office at 312-596-2222 or 217-714-8558.
Please check out the other posts and pages on my website for more information on trademarks and other intellectual property and business law issues.
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