How to Avoid 2 Big Mistakes with Fanciful Marks
What is a fanciful mark, and why do business owners like them?
A fanciful mark is wording you made up to indicate the source of your products or services. If someone tries to look it up in a dictionary, they won’t find it. You may also hear people refer to this type of mark as a “coined term.” Famous examples include KODAK, EXXON, or XEROX.
Fanciful marks are appealing to business owners because these marks are the strongest possible type of mark. It’s pretty unlikely that someone else will come up with the same made-up wording that you did. And even if they do, it’s pretty unlikely that they will use that wording in connection with the same products or services that you do (or ones closely related to them). That means with a fanciful mark, speaking very generally, you are less likely to run into problems with trademark infringement or with your application being refused by the USPTO due to a likelihood of confusion with another mark.
Avoid Big Mistake #1 by making sure that people can spell, pronounce, and remember your mark.
Once business owners catch on to the advantages of fanciful marks, sometimes they get a little carried away. They want to come up with a mark that is so unusual, no one else will have anything close to it. While it may be true that no one else has yet filed an application to register the mark HJDRTF (to date, no one has), there’s probably a good reason for that. If you sold a really great product under this mark, and your happy customer wanted to recommend it to a friend over the phone, could they pronounce it? Would their friend be able to spell it and type that wording into a Google search later to find your website or some other site where your product is sold? Would either of them be able to remember it?
Wording that’s easy to spell and easy to pronounce is also easy to remember. No one has a hard time figuring out how to say KODAK or EXXON. These mark-makers got it right. While I haven’t seen an application for HJDRTF, I’ve seen applications for wording that was equally bewildering. Remember that your mark is how customers find you and how they share their positive experiences with you among their friends and family. Reduce friction. Make that process as easy as possible for them. If you come up with a fanciful mark, make it easy to spell, say, and remember.
Avoid Big Mistake #2 by checking whether your mark means something in another language.
If you come up with a fanciful mark, it exists only in your mind until you release it out into the world, right? Not always. Sometimes someone comes up with a beautiful, appealing mark that to them is a made-up word, but they later find out that this wonderful sounding and looking collection of letters actually already has a meaning in another language. I saw this happen many times back when I reviewed trademark applications at the USPTO.
If your mark has a non-English meaning that you are unaware of, this can cause you a world of pain. It can be both a marketing problem and a legal problem. What if the term has an unsavory meaning that you would not want associated with your products/services? Sometimes even big companies have gotten this wrong. For example, the owner of the GERBER mark (used with baby food) had to find out the hard way that French-speaking customers would associate their products with vomit. Your mark can have powerful emotional resonance, even if it is a made-up word. But you want to be aware of and in control of what it communicates to customers.
You should also be aware that if your mark has a meaning in a foreign language that is living and non-obscure, the USPTO Examining Attorney who reviews your application will search not only for the wording as it appears in your mark, but also the English-language equivalent of whatever that wording means in the foreign language. For example, if your mark means “HAND” in another living, non-obscure language, and someone else already has a registration for the English word “HAND” used with the same products/services as yours or ones closely related to them, you may find yourself on the receiving end of a refusal to register your mark due to a likelihood of confusion with that English language mark. That’s true even if you had no idea that the wording in your mark had a meaning in another language and didn’t intend for it to. What matters here is consumer perception, not your intention.
This can also come back to bite you in the loss of TEAS Plus status. The USPTO’s TEAS Plus trademark application filing form is less expensive than their TEAS Standard form, and that makes the form very appealing to applicants. But there are many ways to lose TEAS Plus status after filing. One of the most common is a failure to provide a translation statement for wording that has a meaning in a foreign language. The penalty fee you pay when you lose TEAS Plus status is per class, so it can add up very quickly. Back when I reviewed trademark applications at the USPTO, I sometimes had to assess hundreds of dollars of fees for loss of TEAS Plus status in multi-class applications due to a failure to provide a translation statement even though the applicant had no prior knowledge of what the wording meant. I always felt really bad for mark owners, but there was nothing I could do about it.
Don’t let yourself fall into that predicament. There are a few relatively quick and easy steps you can take before contacting an attorney about your trademark that may save you time and money later on. First, do a simple search for your made-up term in Google. If you get a bunch of hits for sites written in a foreign language, that’s a good indicator that your made-up term may have a meaning in another language.
You may also want to pop your fanciful mark into Google Translate and see if anything comes up. You’ll want to select the “Detect language” option, because you’re not sure what language it might have a meaning in. Be aware that Google Translate can be an overeager helper and has many times given me false positives – meaning it told me that the wording had a meaning in another language when it really didn’t.
For that reason, if Google Translate gives you a translation result, I recommend doing a follow-up search on another site to confirm and not just taking Google Translate’s word for it. One of my favorite online foreign language dictionaries is Collins. You can choose from many languages including French, German, Italian, Spanish, Portuguese, and many more. If you think your term may have a meaning in French, for example, select the “French to English” option, and enter your term. If Collins gives you an English translation, you’ll have some confirmation. If there’s no result, then Google Translate may be leading you astray.
PLEASE NOTE: what I’m describing here is not a trademark search or a trademark clearance search and in no way substitutes for that. I do recommend having an experienced trademark attorney perform a search for your mark before having that attorney file an application for you with the USPTO. I do not recommend trying to perform that search on your own. For a handful of the top reasons why, you can read more here. It boils down to the fact that searching for trademarks takes a lot of training and a lot of practice before you actually know how to (a) find all the marks you need to see and (b) assess whether the marks you find are likely to block your path to registration.
That said, doing the basic searches described above before contacting an attorney to perform a thorough trademark search can still be very helpful and can save you time and money. Let’s say you come up with a fanciful mark that you love, but when you run a rough search, you find out it has a really negative meaning in another language – congratulations! Although it’s a shame that that mark won’t work for you, you’ve saved yourself time and money. You’re not paying a trademark attorney to find that out for you and waiting around for their report. At the very least, these search tips may help you avoid some of the most obvious potential problems with your mark.
Now that you’re familiar with some of the common pitfalls to avoid, have fun brainstorming your next fanciful mark!
This information was posted on July 21, 2023 and was accurate as of the date of writing. However, the law changes frequently, and readers should not rely solely on general online information but instead should consult a licensed attorney by asking questions about their specific issues when they need legal advice.