Many business owners try to choose names or marks that clearly spell out the product or services that are being offered. However, these are the weakest types of marks. Generally, the strength of a mark is improved if the mark has less connection to a characteristic of the products or services it identifies. Fanciful trademarks are inherently distinctive.
Fanciful marks involve terms that are invented solely to function as a trademark or service mark, or that have completely fallen out of common usage. In other words, fanciful marks are often neologisms or words that have become archaic.
Because of their distinctiveness, fanciful marks are considered the strongest or among the strongest types of trademarks. They refer only to the products or services to which they are applied. A fanciful mark does not have meaning other than with reference to particular products or services. For example, Exxon® is used solely to refer to a brand of motor fuel and products related to the motor fuel. Similarly, Kodak® (now “Eastman Kodak”) was used as a mark for a company that produced imaging innovations. Other fanciful marks are those like Clorox® and Polaroid®.
If you are considering a name for your goods or services, a fanciful trademark is a very strong choice. A fanciful trademark gives you the exclusive right to use the mark in connection with your particular goods and services, and to prevent others from using it. Using a fanciful trademark gives you the best chance of winning a trademark infringement suit or resolving a cybersquatting dispute in your favor. The downside of a fanciful mark is that it can take a long time for the public to associate the mark with the type and recognize its association with the products or services you are trying to offer.
If you have received a cease and desist letter in connection with your use of a mark, you may be wondering whether the sender of the letter has a case. The letter may accuse you of trademark infringement, trademark dilution, or cybersquatting. Trademark dilution occurs when you have used a famous trademark such that the mark is less capable of identifying the famous trademark owner’s product or services, or such that the owner’s reputation is tarnished. For example, if you call your blog “Clorox blog” and your blog is about your personal life, not Clorox, this probably would be considered dilution. Cybersquatting happens if you register, use, or sell a domain name online with the bad-faith intent of profiting from another’s trademark.
In order to establish trademark infringement, a plaintiff will need to show that it owns a valid mark and that your use of the mark is likely to cause confusion. Trademark owners are protected against anyone else using their marks, or reproductions or imitations of their marks, in commerce when that use is likely to cause confusion, likely to cause a mistake, or made in order to deceive. It is easier for a plaintiff to prove trademark infringement and related claims if the mark at issue is fanciful.
In some cases, a plaintiff will ask for preliminary injunctive relief in a lawsuit, in addition to damages. The court will consider the probability that the plaintiff will succeed, the threat of irreparable harm to the plaintiff if you continue to use the mark, the balance of harms, and the public interest. Since a fanciful mark’s sole connection is to the products or services of the mark’s owner, a court is likely to weigh these factors in favor of the plaintiff. If you receive a cease and desist letter in connection with a fanciful mark, you should be aware that the court is likely to see you as trading off the goodwill that the mark’s owner has created.
However, if you receive a cease and desist letter in connection with using a fanciful mark in order to comment upon it, criticize it, or do something artistic with it, as opposed to using the mark in connection with your own goods and services, you may have a strong First Amendment defense. Courts have protected the public’s right to use trademarks in criticism, journalism, and other noncommercial forms of expression.
