Can You Trademark a Variation of a Word?

by Lee Roberts

Companies use specific words, phrases and images to distinguish their products from those of their competitors, including words that you will not find in the dictionary. These words, phrases and images become valid trademarks and service marks when companies use them according to trademark law. If you choose to register the word with state agencies or the U.S. Patent and Trademark Office, you will acquire additional resources to protect your brand. Using a variation of a word creates opportunities for you but also introduces some problems into the trademark process.

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Exclude Competitors

Trademarks identify and distinguish your goods from all others. The word must allow consumers to identify the goods or services to which the mark will apply precisely. Trademark does not grant you exclusive use over your chosen word under every circumstance. You are able to exclude others only when they try to use the word in connection with similar goods or services. If your competitors used the same word to identify their goods or services, consumers would not know who bore responsibility for producing the goods or providing the services.

Invented Words

Trademark rules give businesses leeway in choosing words. As examples, "Pepsi," "Exxon" and "Kodak" are all words invented by their owners. This practice follows the underlying rationale that trademarks must be distinct. By allowing businesses to expand beyond words in common usage, the chances increase of each business being able to find a distinct word. When you make up a word, you define its meaning. Making up a word gives you the leeway to tie its definition closely to your product or service and not those of others. You will not have to worry about alternative meanings that might conflict with the message you are trying to send to the marketplace.

Confusion

Word variations must not cause confusion in the marketplace. You cannot create a valid trademark if the word you choose also creates a false impression that your business is associated with another business. In a trademark dispute, courts will evaluate the likelihood of confusion between two similar marks. If the trademark owners operate in unrelated industries, it is less likely that the use of the word will confuse consumers or creditors about the true manufacturer of the product.

Degrees of Protection

According to the USPTO, words that are fanciful, such as Belmico for “insurance services” or arbitrary, such as banana for “tires” give their owners a strong degree of protection from infringers because these words are inherently distinctive. Suggestive marks, such as Quick N’ Neat for “pie crust” have more of a relationship to the underlying goods or services than fanciful or arbitrary marks, but still are inherently distinctive. The USPTO states, "Fanciful marks are invented words with no dictionary or other known meaning. Arbitrary marks are actual words with a known meaning that have no association/relationship with the goods protected.” If the word describes the product, it must also take on a secondary meaning to serve as a valid trademark.