Associate General Counsel
Before I was an attorney, I was an “ad guy.” This was before working in advertising became popularized, and inevitably cool, on AMC’s hit show Mad Men. Years later I became an attorney, and since then I’ve learned about what makes a good brand name or as we call it in the legal profession, a good mark or trademark. You don’t need to be an attorney to know that a trademark is simply a source identifier of goods or services. That’s its raison d’etre.
By way of example, let’s say you’re someone who is picky about your soda, and you find the taste of PepsiCo (Pepsi) more appealing than Coca-Cola. One day after work you stop in to your local grocery store, you go to the soda aisle and immediately start scanning the shelves for the Pepsi name and its iconic red, white and blue logo. Imagine if just any company could use the Pepsi logo, the words Pepsi or something similar, to refer to its soda. Imagine how confused and difficult it would be for you to find the soda that you want. That’s the purpose of trademarks – to avoid this type of confusion.
The process of creating and choosing a trademark is one of the most important and difficult tasks undertaken by businesses. There are many marketing, business and legal issues to consider when choosing a mark, such as messaging, overall impression, attractiveness to the targeted market, and avoiding infringement. These are some of many reasons why it is so expensive and time consuming to develop the right mark and why it’s best not to rush the marketing and legal departments, and ad agency through the process.
Still, in 2017, the legal strength of a trademark is overlooked during the development process. The legal strength of a mark is important to a trademark’s protectability, exclusivity and enforcement. Strength is said to be on a spectrum – on one end, there’s a generic “trademark” that is not capable of having trademark rights, and on the other end, a fanciful mark (strongest mark).
A generic mark is one that simply identifies what the good or service is the person or entity is selling. For example, “Beer” in connection with the sale of a can or bottle of beer, can never act as a source identifier and trademark rights can never vest. If a company could acquire trademark rights in the mark BEER in connection with the sale of a can or bottle of beer, how would other breweries market and sell their can or bottled beer? Those companies would need to say something like, “carbonated beverage tasting of hops, toasted barely and a touch of rye.” You can probably picture marketing departments everywhere banging their heads out of frustration just thinking about having to use something like that.
It’s pretty easy to understand why generic “trademarks” do not make good “trademarks.” Thankfully, no marketing person or advertising agency ever suggests it.
Descriptive trademarks simply describe the goods or services. For example, Best Buy for the best buy of electronic goods and services. McDonalds is probably one of the most well-known, descriptive trademarks. It stands for Ray McDonald’s [Restaurant].
People often fall in love with this type of mark because it describes their company’s good or service. It makes sense to them. It also isn’t a very good trademark, and the rights can be limited. That’s not to say companies can’t have strong trademark rights in descriptive trademarks. They can, and do.
Best Buy and McDonalds both have strong, enforceable trademarks. Both have been selling their goods and services under those trademarks for many years and consumers have developed a strong association between those goods and services and those trademarks. So don’t go opening a business with those trademarks to sell competing goods and services. It’s not a good idea.
With that said, descriptive marks are boring and not very creative. Honestly, it’s best to just avoid these marks all together when coming up with a brand name.
This is where trademarks start getting good (and fun), and they’re considered “strong” marks in the legal profession. These trademarks are ones that require a mental leap to ascertain the goods or services being sold. For example, Greyhound for a speedy bus service.
These marks are far more difficult to develop but as they say in the field, “They’re worth the price of admission.”
Arbitrary trademarks are stronger than suggestive trademarks. These marks are characterized as having no relation to the company’s goods or services. Apple, in connection with the sale of personal electronics, is a good example. Fruit has absolutely nothing to do with personal electronics, such as computers or phones.
These trademarks are the strongest and are marks that have no meaning in language other than as a trademark. For example, two of the most famous fanciful trademarks are Exxon and Kodak. The words Exxon and Kodak have no meaning in the English language other than as a trademark.
Where does that lead us? If your ad agency or marketing team presents something descriptive or (gasp) generic, tell them to go back and come up with some better options. They’re inherently creative folks to begin with or they wouldn’t have gotten into the business. In fact, they’ll probably enjoy the challenge even if it takes more time.
Of course, there’s much more to creating and selecting a trademark than what’s in this blog, and for that, talk to your in-house marketing experts, advertising agency and your favorite intellectual property attorney.
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