There once was a company named Zotz,

Which created toys for tots,

Let’s use “Robotoy,” Zotz declares,

File at once, Lawyer Zares,

Months later, Zotz is dejected,

Too descriptive, trademark rejected.

What’s wrong with “Robotoy,”? Whether a trademark can be registered depends on its position on the spectrum, from the strongest -- fanciful to arbitrary to suggestive --- to the weakest – descriptive to generic. Fanciful trademarks like Zotz have no meaning in any known language. Arbitrary marks have a meaning that does not relate to the goods or services offered. APPLE is arbitrary for mobile devices. To some, POLAND SPRING is suggestive of water. Descriptive marks tell you about the nature of the goods or services, and unless the mark acquires distinctiveness (which is not easy to do), descriptive marks are very difficult to protect. A generic mark, the precise name of the thing, can never be registered.

First published in Inside magazine, NYSBA, Fall 2017