Generally, in order for a certain name or mark to be protected as a trademark, the name or mark must be able to identify the source of the product bearing such name or mark, or in other words it must be “distinctive.” Courts have grouped potential trademarks into several categories for the purpose of determining whether a mark is sufficiently distinctive to be protected as a trademark, which categories include, from least easily protectable to easiest to protect: (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful.
The less distinct a name or mark is the more likely the law will require the mark to have a “secondary meaning” before such mark will be protected as a trademark. A mark or name is said to have acquired secondary meaning when the consuming public primarily associates a particular name or mark with a particular company or producer and not with the product which the name describes. Thus, the name “Hamburger Place” only acquires a secondary meaning when the average consumer associates that name with a particular restaurant instead of generally a place to get hamburgers. The law generally requires that a personal name must acquire secondary meaning before it can gain protection under the trademark laws. This includes first names, the combination of first and surnames, and surnames alone.
Therefore, when choosing a name for your business, don’t forget to consider your ability to protect your name under the trademark laws. Although that which you call your business may be by any other name just as successful, if you use a personal name, it may not be protectable under the trademark laws. For more information, please contact one of our intellectual property attorneys here.