Posted on December 07, 2021
A fanciful trademark is one of the commonly accepted types of trademarks. Other categories of trademarks include arbitrary, suggestive, descriptive, and generic. It’s important to note that descriptive and generic trademarks are generally not eligible for trademark registration. Fanciful trademarks are made-up words that have zero relationship between the name and the product or service. KODAK is a classic example. As a result, it’s relatively easy to meet the criteria for approval.
A trademark has two criteria for eligibility; it must be distinctive, and it must be used in commerce. The word “fanciful” establishes its distinctiveness level. As the word is made up, it’s likely to be unique enough to meet this requirement. However, distinctiveness isn’t the only thing you should consider, as a fanciful trademark comes with some limitations.
What Is a Fanciful Trademark? Benefits and Limitations
A fanciful trademark is one coined for the company’s use. It’s sometimes confused with a suggestive trademark, as those may also be made-up words. However, the difference between a fanciful and a suggestive trademark is that the suggestive one combines existing words to create a new one (think Netflix, which combines “internet” with “flicks.”).
A fanciful trademark is different because it’s an entirely new word. Here are a few examples of fanciful trademarks.
| Pepsi | Rolex | Exxon | Verizon |
|---|---|---|---|
| Pepsi was a word created after Caled Bradham bought the rights to another soft drink, “Pep Kola” in 1898. He then changed the name to Pepsi Cola and used it for his own recipe. | Hans Wilsdorf made up the name Rolex in the early 1900s. It was specifically created to be easily pronounceable in any language and short enough to fit on the face of a watch. | Exxon was a name created to combine three brands: Esso, Enco, and Humble. It was specifically chosen because the name had no alternate meaning in any language. | Verizon combines the Latin word veritas with the word horizon. While word combos are the foray of suggestive trademarks, the combination Verizon chose is obscure enough to fall more into the fanciful realm. |
Fanciful trademarks can be helpful because it’s straightforward to meet the trademark distinctiveness criteria. A fanciful trademark is easier to enforce, as any infringement will be clear-cut. Conversely, you’re also less vulnerable to trademark objections.
However, there are some limitations to consider.
The Limitations of Fanciful Trademarks
You might have noticed that the above fanciful trademark examples were all developed by relatively established companies. In Exxon and Verizon, the names came about following massive mergers of already well-known entities. Meanwhile, Rolex and Pepsi had the backing of respected industry experts.
It can be extremely challenging to get name recognition for a fanciful term. People need to be able to associate your brand with the product you offer. As the phrase doesn’t clearly identify what it is, that’s an uphill battle. Consumers may be confused by the name of the product and that can lead to a lack of trust necessary to establish a following. In most cases, you’re going to need a massive marketing budget and an existing loyal consumer base.
Finally, you may find that your unique word or phrase isn’t as unusual as you’d hoped. Even Pepsi, which seems like it would be a unique word, faced challenges from a similar-sounding drink, “Pep Kola.” Caled Bradham eliminated confusion by purchasing the brand name from his competitor, but that’s not always a feasible option in a small business trademark process. Your best option is to work with an attorney to vet your name and make the best decision.
Working with an Attorney to Improve Your Trademark Process
An attorney can provide you with valuable guidance in the trademark process. One of the first things they can help you with is offering an opinion on the feasibility of your term. At Bold Patents, we often find that the best choice for our client is a suggestive trademark over a fanciful one. A suggestive trademark gives the consumer a good idea of the nature of the product or service while still meeting the criteria for approval.
We also work with clients who want fanciful trademarks and are prepared to take the steps necessary to meet their goals, including helping them search through databases and fill out a complete application that will streamline approval. If you choose to move beyond US borders, we can help get your trademark international recognition through the Madrid International Trademark System. Your initial application will kick off this process, so it’s vital you complete it correctly.
We work with clients all the time who want to register their fanciful trademark and need the proper guidance. Our detailed legal opinions and application assistance helps them protect their intellectual property while minimizing the risk of denials and infringement.
Bold Patents offers the expertise you need to protect all your intellectual property, including fanciful trademarks. To schedule a free consult, connect with us on our contact page or call 601-298-8425.
