Category: Trademark Registration

Trademark Gaff #27: Thinking You Can Protect Generic Terms as Trademarks By MissSpelling Them

Can I Register a Generic Word as a Trademark if I MissSpell It?

Ok. This is a cute move in an attempt to thwart trademark law. Unfortunately, it isn’t going to work. Thinking that you can simply misspell a term that is otherwise generic for your products is a fruitless attempt to build trademark rights; and quite frankly, likely a waste of time, money and effort. As Nike® would not say: “Just Don’t Do It!” You will get nowhere fast.

Can I Register a Generic Word as a Trademark?
Helping Brand Owners Get From Here to There

Simply put, if a term is considered generic for your products, a novel spelling of that term is also generic if purchasers would perceive the different spelling as the equivalent of the generic term. The only exception to that rule is if you’re able to successfully misspell a generic term in a manner that the misspelling changes the term’s generic significance. However, such a strategy is unlikely to result in a protectable trademark.

In my own practice I see brand owners attempting this strategy quite often. When they ask me the question “Can I Register a Generic Word as a Trademark if I Misspell it?” I immediately tell them “no” and then give them a better strategy.

One of the more common attempts is to misspell the term “cleaner” for cleaners. You’ve probably seen names of cleaners that use the term Kleener.

That strategy is not a strategy at all. I’d consider it more of a branding gaff.  The same also holds true generally for descriptive terms.

Can I Register a Generic Word as a Trademark?
U.S. Patent and Trademark Office
Strategy: Select Inherently Distinctive Marks and Add Generic Terms

If you must use a generic or descriptive term or terms in your mark because you want to “tell” the world what your product is, then I give you permission to do so on one condition, however. You select a distinctive mark (i.e., suggestive, arbitrary or coined) and then simply add a generic term.

Think of DieHard® Batteries and CloseUp® Toothpaste.

That simple. Now go and build your brand.

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Why Brand Names Are Like Running Shoes: Poor Selection Can Cause Serious Injury

The Importance of Trademark Selection

Trademark SelectionDo not be one of those brand owners that learns the hard way. There is simply no reason to select brand names that are fundamentally incapable of winning the race. Recognizing that marks come in all different “shapes, colors and sizes” and, as a result, receive different levels of protection is a first step to building your brand name powerhouse. It can also be the difference between brand success and brand failure. Simply put, don’t fall victim to the “brand name trap.”

Selecting the wrong brand name for your product can result in a “false start,” which can inevitably disqualify you from the race before it begins. Just as the difference between winning and losing a horse race can be fractions of a second, the difference between selecting a winning or losing brand name is a fine line that if not understood can result in brand failure.

If you were training for a marathon would you aimlessly select running shoes that couldn’t withstand a long and grueling race? Of course you wouldn’t. Then why do so many brand owners succumb to the temptation of aimlessly selecting trademarks that haven’t got a chance of taking their products over the finish line?

Would you go out and purchase running shoes one week before a marathon? Hopefully you would purchase them well in advance so you have ample time to evaluate them, ensure they’re adequately comfortable and determine whether they’re the “right” shoes for running a successful race. The same holds true for your trademarks. Aimlessly selecting your brand names without appreciating their varying levels of quality – or their blend of legal and marketing strength – can spell disaster for you, your company and its brands.

Trademark Selection

Trademarks range from terms that describe certain aspects of products to terms that are coined, such as the marks Kodak® and Xerox®. The types of marks consist of terms that are descriptive, suggestive, arbitrary or coined when used in connection with their associated products. Terms that are considered generic for certain products, such as “The Wine Company” for a company that sells wines, can never be trademarks. The terms “trademarks” and “generic” are mutually exclusive. There is simply no such thing as a “generic trademark,” [updated: July 2, 2020: except, maybe, for Booking.com :)]

Understanding the different levels of legal protection afforded by each type of trademark is an important aspect of the trademark selection process. Another aspect of the trademark selection process is appreciating marketing strength.

When you combine the concepts of legal and marketing strength in your trademark selection process, you’ll be well on your way to adopting brand names that have the potential for running ahead of the pack.

Let us help you with your brand name selection and trademark registration process.