A made-up word is the only kind the law protects on sight

On 15 December 1906, George Eastman answered a letter from a professor at the University of Chicago who had asked where the word Kodak came from. Eastman had coined it eighteen years earlier. His reply is the oldest written naming brief we have found:

"In regard to the word Kodak I can say that it was a purely arbitrary combination of letters, not derived in whole or part from any existing word, arrived at after considerable search for a word that would answer all requirements for a trademark name. The principal of these were that it must be short; incapable of being misspelled so as to destroy its identity; must have a vigorous and distinctive personality; and must meet the requirements of the various foreign trademark laws." — George Eastman to John M. Manley, 15 December 1906

The version of this that circulates says Eastman wanted a name that was short, easy to pronounce, and unlike anything else. That paraphrase drops the two criteria worth having.

"Easy to pronounce" is not what he wrote. He wrote incapable of being misspelled so as to destroy its identity, which is a sharper and stranger idea: he assumed people would spell it wrong and asked whether the wrong spellings were still recognizably his. And the fourth criterion, the one nobody quotes, is about trademark law. In 1906, before the Lanham Act, before the modern spectrum of distinctiveness, a camera manufacturer in Rochester had already worked out that the shape of a word decides what you can own.

He was right, and the case law caught up seventy years later.

Four categories, in ascending order

In Abercrombie & Fitch Co. v. Hunting World, 537 F.2d 4 (2d Cir. 1976), Judge Henry Friendly set out the classification every American trademark dispute has run on since:

"The cases, and in some instances the Lanham Act, identify four different categories of terms with respect to trademark protection. Arrayed in an ascending order which roughly reflects their eligibility to trademark status and the degree of protection accorded, these classes are (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful. The lines of demarcation, however, are not always bright."

Ascending order. Generic names cannot be owned at all, no matter what you spend: Friendly's opinion is blunt that "no matter how much money and effort" a company pours into promoting a generic term, "it cannot deprive competing manufacturers of the product of the right to call an article by its name." Descriptive names need proof that the public has come to associate them with you. Suggestive names require "imagination, thought and perception to reach a conclusion as to the nature of goods."

At the top, the Ninth Circuit says the quiet part in Elliott v. Google: arbitrary or fanciful marks "are automatically entitled to protection because they naturally serve to identify a particular source of a product."

Automatically. No survey, no five years of use, no proof of secondary meaning. The distinction inside that fourth category is the one that matters here. Arbitrary is a real word pointed at something it has nothing to do with, which is why Friendly's footnote observes that "Ivory" is generic for a product made from elephant tusks and arbitrary as applied to soap. Fanciful is a word that did not exist until you made it. Kodak, Xerox, Exxon, Verizon, Häagen-Dazs.

What an empty word costs

An invented word means nothing, which is the point and also the bill.

In October 1971, Time covered the naming exercise at Standard Oil of New Jersey. The company had run through thousands of candidates, "including meaningless letter combinations clacked out by computers," polled 7,000 consumers, and tested the survivors in 55 languages. One executive explained the appeal of the winner in seven words: "it says nothing and it means nothing."

Exxon then spent an estimated $100 million. That figure gets repeated as the price of the name, and it is worth being precise about what Time actually reported: the $100 million covered "research, advertising and physically changing the name on signs and other items" across 28,600 filling stations. The word was cheap. Teaching the world the word was not.

A descriptive name arrives explaining itself and has to earn its protection afterwards. A coined name arrives owning itself and explaining nothing, and you pay the difference in advertising for as long as you exist. Eastman's third criterion, the "vigorous and distinctive personality," is not something a coined word has. It is something you have to put there.

The criterion you can actually check

Which leaves the second criterion. Say your name out loud to somebody. They will write it down. If what they write is a different word, you have lost them, and you will keep losing them in search boxes, in email addresses, and in every conversation about you that happens when you are not in the room.

English is unhelpful here: most of its sounds have several respectable spellings. f and ph. k and c and ck. s and z and c. ee and ea and ie. A coined word draws on the same alphabet without the protection of being a word anyone has seen before, so every one of those forks is live. Below is every plausible way somebody could write your name after hearing it once.

Eastman's brief · 1906

The four things George Eastman required of the word Kodak, run against a name of your own. Two of them a machine can answer.

Coined name

1. 1

   “It must be short”

   5 letters, about 2 syllables.

   Kodak: 5 letters, 2 syllables. Syllables are estimated from spelling, so a name that hides one will read low.

2. 2

   “Incapable of being misspelled so as to destroy its identity”

   6 plausible spellings.

   • codak
   • kodac
   • kodack
   • codac
   • codack

   3 of these change the first letter, which is the expensive kind: they sort elsewhere and look wrong at a glance. Every swap here is a pair English really uses for one sound, so these are what somebody writes after hearing the name once. Whether any of them destroys the identity is your call.

3. 3

   “Must have a vigorous and distinctive personality”

   Not checkable here.

   A coined word has no personality yet. That is the thing you buy with the advertising budget, and any score for it would be invented.

4. 4

   “Must meet the requirements of the various foreign trademark laws”

   Ask a lawyer.

   Registrability turns on what your buyers primarily understand the word to mean, in every market you sell in. No browser knows that.

Kodak comes back with six spellings, and three of them change the first letter: Codak, Codac, Codack. By a naive rule that is a bad result, and Eastman would have shrugged. His test was never whether the name could be misspelled. It was whether the misspelling destroyed the identity, and Codak does not. You still know whose camera that is.

Type xerox and the count triples to eighteen, one of which is Zerox, because an initial x in English says z. Type phoenix and you get Foenix. Those are names where a listener can end up writing a genuinely different-looking word, which is a cost you pay forever and can at least know about in advance.

The tool counts. Whether any of those spellings destroys the identity is a judgment, and it stays yours.

The failure at the other end

There is one way to lose a fanciful mark, and it is by winning too hard.

Friendly's own footnote cites Haughton Elevator Co. v. Seeberger, in which "the coined word 'Escalator', originally fanciful, or at the very least suggestive, was held to have become generic." Charles Seeberger assembled that word out of Latin and registered it in 1900. Otis bought it in 1910 and lost it in 1950, and has sold moving staircases under a name nobody owns ever since.

Friendly names the mechanism exactly: protection is denied "when a suggestive or fanciful term has become generic as a result of a manufacturer's own advertising efforts." Aspirin went that way in 1921, when Learned Hand reduced the whole question to one line: "What do the buyers understand by the word for whose use the parties are contending?" Bayer had sold to doctors and druggists rather than to the public, so the public knew the drug by one name only, and that name was Bayer's. Cellophane followed in 1936. Thermos in 1963.

Google was sued on the same theory in 2012 and won on appeal in 2017. The Ninth Circuit held that using a mark as a verb proves nothing, because "consumers do not refer to search engines, themselves, as 'googles'." Its test is the most useful sentence in this entire body of law:

If the relevant public primarily understands a mark as describing "who" a particular good or service is, the mark is still valid. If it primarily understands the mark as describing "what" the good or service is, the mark has become generic.

Who-are-you, or what-are-you. Escalator became a what. Google stayed a who, because there were other search engines and everybody knew it. The protection an invented word grants you on day one is conditional on the market never quite running out of alternatives to you.

Coin when you intend to spend

The legal position is real. It is also an IOU: the word means nothing until you have paid to make it mean something, and that bill arrives whether or not you budgeted for it.

Run Eastman's second test before anything else. Say the candidate aloud to someone who has not seen it and have them write it down. This costs nothing and kills more bad coinages than any other single check.

Make the misspellings survivable rather than impossible. Impossible is not available in English. Eastman did not ask for a name nobody could get wrong. He asked that getting it wrong still land you on him.

Do not confuse coined with meaningless. Kodak is arbitrary by Eastman's own account, and it still opens on a hard consonant and closes on the same one. He chose K because "it seems a strong, incisive sort of letter." Page 5 covers what the evidence does and does not support there; the short version is that sound does work, at a smaller size than the folklore claims.

Check what happens if you win. If your name becomes the word for the whole category, you have a marketing triumph and a legal problem, and the two arrive in the same year.