Are Trademarks Ever Fanciful

Abstract

A fanciful trademark – a made-up word like SWIFFER for mops, or XEROX for photocopiers – is presumed neither to describe nor suggest any qualities of the product associated with the mark. This presumption is consistent with the theory of linguistic arbitrariness: there exists no connection between a given word (‘tree’) and the thing signified by the word (‘a large woody plant’). Because a fanciful mark is assumed to be an empty vessel, meaningless until used as a trademark, it qualifies for protection from first use, and receives broader protection against infringement than other categories of trademarks. Research into sound symbolism challenges the theory of linguistic arbitrariness and thus the accepted gap between fanciful mark and product. Multiple studies demonstrate the existence of sound symbolism – connections between the individual sounds that constitute a given word and the meanings that a reader or listener ascribes to that word. Marketers often consider sound symbolism when coining a fanciful mark. Consumers are more likely to favor a new trademark when trademark meaning links to product type, even if they are not conscious of the link. Courts often assume that adopting a mark similar to a fanciful mark is evidence of bad faith, but a new entrant might reasonably desire to use sounds that convey product information. Overprotecting fanciful trademarks could thus impose unjustified costs on competitors, at least when sound symbolism connects the mark to the product offered for sale. Broad protection for fanciful marks that benefit from sound symbolism may therefore be misguided. Courts should instead engage in a more nuanced inquiry, accounting for sound symbolism when assessing the validity and scope of a fanciful mark.