Trademark Law - Power of Portmanteaus Making Descriptive Terms Suggestive
A trademark or service mark has to be distinctive or unique to be registered, and cannot be merely descriptive of the goods or services it covers. One of the most common snags and grounds for rejecting applications on their face is that a mark is merely descriptive. This is known as a 2(e)(1) refusal and happens if a mark “describes an ingredient, quality, characteristic, function, feature, purpose, or use of the applicant’s goods or services”. The USPTO does not want to grant any applicant rights to use a merely descriptive name because it would stop all others from using the same or similar term and effectively make it anti-competitive.A portmanteau (plural portmanteaus or portmanteaux) is a word made of blending other words’ sounds and meanings. Popular examples include brunch (breakfast and lunch), smog (smoke and fog), motel (motor and hotel), cosplay (costume and play), electrocution (electricity and execution), and Bollywood (Bombay and Hollywood). Creative combinations of letters can make terms that are otherwise descriptive on their own distinctive together, or at least move from descriptive to suggestive, which gets through the registration process. This is a great tool when it comes to branding, creating a double entendre or pun.
The strength of trademarks depends on how distinctive they are along the spectrum from (weakest) descriptive → suggestive → arbitrary → fanciful (strongest).Creating a combined or compound word by just removing the space between descriptive terms does not alter the overall commercial impression of the mark being merely descriptive. If both underlying words are fully included, the examining attorney considers the phonetic sound of the mark and will likely reject the application if those underlying words describe the good or service. Creating a new word, or Invented Word in USPTO terms, that combines the terms in a creative way can, though.
By way of example, some marks held to be merely descriptive after hearings by the Trademark Trial and Appeal Board (TTAB) include BATTLECAM for computer game software with battles and various views of the battlefield, THEATL for publications with news and info about Atlanta, and SMARTTOWER for highly automated cooling towers.
Some registered marks that use portmanteaus include GROUPON (group and coupon), NETFLIX (internet and movies/flicks), VELCRO (velvet and crochet), JAZZERCISE (jazz and exercise), MICROSOFT (microcomputer and software), and BISQUICK (biscuit and quick). Advertising and psychology make these names immediately memorable while simultaneously describing purpose, which is really hard to do within the constraints of what can get through a trademark application.
With limited domain names and brand names available using real words, namers often drop vowels (Flickr, Tumblr, Landr, etc.) or intentionally misspell words in ways that can still be understood (Lyft, Digg, etc.). Portmanteaus are another approach to choosing a brand name that signals what you do without being too on the nose for an application to get through.
Picture on the top is by Andrea Piacquadio and is in the public domain.
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