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Choosing a Brand

Trademarks fall on a spectrum of distinctiveness.  The more distinctive, the more easily protected.

Trademarks fall on a spectrum of distinctiveness. The more distinctive (i.e., less descriptive), the more easily protected.

Sitting in front of you is your prototype for your new invention that is sure to change the shape of your industry and hopefully generate significant revenue in the process.  So what do you call it?  Choosing a trademark for your new invention may be more difficult than you initially think.  Marketing consultants will encourage you to choose a name that is descriptive, immediately conveying information about your product to your consumers.  This minimizes the amount of marketing you initially need to do to introduce and explain your product to consumers.  On the other hand, your legal advisors might discourage you from using descriptive names, since those terms are likely to afford minimal legal protection in the future should someone else try to use your trademark and trade on the goodwill you have established with consumers.  Rather, the lawyers suggest you should choose a name that is arbitrary or fanciful rather than descriptive because trademark law provides greater protection to arbitrary and fanciful trademarks.  While it may cost more for you initially to establish the connection between your product and its function in the mind of the consumer, on the flip side, you will benefit from stronger legal protection for your brand.  So how do you resolve this conflicting advice as a new entrepreneur with limited funds?

First a little background on trademarks.  A trademark can be any word, name, symbol, or device used to indicate the source of goods and services and to distinguish the goods or services of one provider from those of another. The owner of a trademark can initiate legal proceedings to prevent others from trading on the goodwill established by the trademark owner in the minds of the consumer.  The amount of protection afforded by a trademark depends on how distinctive the mark is- the more distinct the mark, the more protection afforded.  Trademarks fall along a spectrum of distinctiveness as follows:

Fanciful or Arbitrary Marks:  These marks do not indicate to the consumer any information about the nature of the underlying product or service.  Accordingly, fanciful or arbitrary marks are the most distinctive and receive the most protection under trademark law.  Examples of fanciful or arbitrary marks include APPLE for computers or KODAK for film.

Suggestive Marks:  While suggestive marks hint at (or suggest) the nature or characteristics of a product, they do not explicitly describe the product.  Rather, these marks often require the consumer to take an imaginative leap to arrive at the product.  For example, BLU-RAY, when used as a mark for high capacity data storage that uses a blue laser, is considered to be a suggestive mark.   Legally speaking, suggestive marks are afforded less protection than fanciful or arbitrary marks, but more protection than descriptive marks.

Descriptive Marks:  A descriptive mark is a term with a dictionary definition used to describe a characteristic of the product.  For example, RAPID SEAL for paint sealant or QUICK PRINT for a printing service.   Because the law does not want to grant one person exclusive rights to descriptive terms, these marks are only protected when the mark has acquired secondary meaning in the marketplace, which occurs through extensive use in the marketplace causing a significant number of people to associate the mark with a particular product or company.

Generic Marks: Generic marks are not afforded legal protection because the name is synonymous with the product in the minds of the consumers.  Trademark law seeks to protect brands that reflect the source of the product.  An example of a generic mark would be JEANS for denim jeans, or ASPIRIN for pain relief medication.

Accordingly, to reconcile the conflicting advice received from marketing advisors (select a name that tells the consumer something about the good or service), on one hand, and legal advisors (select a non-descriptive name with strong trade mark protection), on the other hand, the most appropriate category of trademarks to consider might be suggestive marks.  Suggestive marks are capable of immediately indicating qualities of your product, but also provide more robust legal protection than that which is afforded by purely descriptive marks.

2 Responses to Choosing a Brand

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