What is an Arbitrary Trademark?

January 12th, 2012

Welcome to Trademark Law Radio, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration.

This is Trademark Attorney Brian Hall with Traverse Legal, PLC, a law firm representing trademark owners throughout the United States.  Today, I will be answering the question: “What is an arbitrary trademark?”

An arbitrary trademark is an inherently distinctive trademark.  Meaning, that it is a mark that’s entitled to the protections that other inherently distinctive trademarks are entitled to.  So, as opposed to descriptive trademark, which isn’t entitled to the exclusive right to use a particular mark in connection with goods or services. Put simply, if you are looking to have a particular kind of trademark, it’s better to have an inherently distinctive trademark because it gives you all the benefits that go along with those trademark rights.

In particular, an arbitrary trademark is a word with significance recognized in everyday life, but instead of signifying that particular thing, it signifies something entirely unrelated to the product or service to which the mark is attached, for example, cigarettes. There is a particular brand called Camel.  Camel is an everyday term or word referring to a particular animal, but it has no relation to or significance to cigarettes.  Similarly, Apple for computers and the related devices or even Blackberry for the particular kinds of mobile phones.  These types of marks utilize dictionary words but put them in connection with a good or service that has no relation to what it is.  Therefore, they are inherently distinctive.

Arbitrary trademarks are very strong and entitled to protection under law.  Most cases that review whether a particular mark is strong or not, will deem that arbitrary trademarks are of the strongest kind available.  There, when you are determining what kind of trademark to choose for your goods or what kind of service mark to choose for your services, it’s important to know the various levels of strength that are attributed to kinds of marks.  You do not want to have a generic or merely descriptive mark.  Instead, you want the various kinds of inherently distinctive trademarks, which are suggestive, arbitrary – like we’re talking about now- and fanciful trademarks.

Now, while some people tend to choose marks that give consumers a better idea of what they’re selling and shy away from arbitrary trademarks, it’s important to recognize the implication of doing so.  From a trademark law perspective, merely describing your goods or services with a descriptive mark or even a generic mark, will not provide you any trademark rights.  However, using arbitrary trademark will provide you with the trademark rights necessary to make others cease and desist from continuing to use a mark that would create a likelihood of confusion.  Put another way, gives that trademark owner an ability to go after and stop those that are infringing his or her particular trademark.

So, ultimately, as a trademark attorney, I tend to advise my clients to select, where possible, inherently distinctive marks, such as an arbitrary trademark.  However, in the event that they have not selected an arbitrary trademark or are already using a mark that wouldn’t qualify as an arbitrary trademark, there are still things that can be done to enforce your trademark rights and do the necessary policing of your mark in order to ensure that you maintain whatever trademark rights you have, regardless of strength of that particular mark.

So, once again, this has been Brian Hall answering your question: “What is an arbitrary trademark?”

You’ve been listening to Trademark Law Radio.  Whether you are facing a trademark infringement, licensing, monitoring or trademark registration issue, we have a trademark attorney ready to answer your questions.

Share Button

2 Responses to “What is an Arbitrary Trademark?”

  1. An arbitrary trademark is typically the best trademark you or your company can have. Our trademark registration lawyers typically advise clients that they should, if possible, select a suggestive or arbitrary word for their brand name or service mark. It is always best to hire a trademark lawyer early in the process before you have settled on a word or name for your company, product or service. Good trademark attorney can help you understand a strong trademark from a week trademark as well as the differences between a descriptive, suggestive or arbitrary use of the word as a mark.

    Why is an arbitrary trademark a strong trademark? The answer is because the consumer, when hearing the word, will only and always think of you, your company or business when they hear or see the word. Apple is an arbitrary trademark for Apple computer company.

    Selecting the appropriate word or phrase for your brand name is a critical part of the trademark process for protecting intellectual property. Don’t hesitate to contact a trademark registration lawyer before you get too far into the process of picking a word or phrase for your brand name. Even if you find a word which you want to use it as a trademark and everyone Greek agrees it is a strong trademark, you will still need to do a trademark availability search to see if you might be infringing someone else’s previously used trademark before making your final selection.

  2. admin says:

    Arbitrary trademark examples include Nike, Apple for computers, etc. Examples of arbitrary trademark registrations tend to be those brands which are already famous. Consumers would recognize examples of arbitrary trademarks which they’ve never heard of before. A good trademark lawyer will help the client understand trademark options. The best trademark lawyer will help the client pick a strong trademark which is either arbitrary or fanciful.

Leave a Reply

Official Trademark Clearinghouse Agent
Domain attorney recommended by Domaining.com
© 2011 Traverse Legal, PLC. All Rights Reserved.
Traverse Legal on LinkedInTraverse Legal on FacebookTraverse Legal on Twitter
Events & Conferences:
  • International Trademark Association 2011, San Francisco, California
  • Cyber Law Summit 2011, Las Vegas, Nevada
  • Game Developers Conference 2011, San Francisco, California
  • DOMAINfest 2011, Santa Monica, California
Recent Attorney Speaking Engagements:
  • South By Southwest 2010 SXSW Interactive Conference, Austin, Texas
  • West LegalEdcenter Midwestern Law Firm Management, Chicago, Illinois
  • Internet Advertising under Part 255, Altitude Design Summit, Salt Lake City, Utah
  • Online Defamation and Reputation Management, News Talk 650 AM, The Cory Kolt Show, Canada Public Radio Saskatewan Canada
  • Alternative Fee Structures, Center for Competitive Management, Jersey City, New Jersey
  • FTC Part 255 Advertising Requirements, Mom 2.0 Conference, Houston, Texas
  • Webmaster Radio, Cybersquatting & Domain Monetization, Fort Lauderdale, Florida
Notable Complex Litigation Cases Handled By Our Lawyers:
  • Trademark Infringement, Milwaukee, Wisconsin
  • Cybersquatting Law, Trademark Law and Dilution Detroit, Michigan
  • Internet Defamation & Online Libel Indianapolis, Indiana
  • Trade Secret Theft, Chicago, Illinois
  • Cybersquatting Law, Anticybersquatting Consumer Protection Act Miami, Florida
  • Cybersquatting Law, Anticybersquatting Consumer Protection Act Eastern Dist. of Virginia, Alexandria
  • Stolen Domain Name, Orlando, Florida
  • Commercial Litigation, Tampa, Florida
  • Copyright Infringement and Cybersquatting Law, Grand Rapids, Michigan
  • Mass Tort Litigation, Los Angeles, California
  • Stolen Domain Name, Detroit, Michigan
  • Adwords Keyword Trademark Infringement, Los Angeles, California
  • Trademark Infringement & Unfair Competition, Boston, Massachusetts
  • Non-Compete Agreement and Trade Secret Theft, Detroit, Michigan
  • Mass Tort, Philadelphia, Pennsylvania
  • Mass Tort, Tyler, Texas
  • Insurance Indemnity, New York
  • Copyright Infringement, Detroit, Michigan