In a world flooded with information, branding becomes the key to standing out against competitors, even in relatively local markets. Picking the right brand presents a marketing challenge, in that you need to find the message, the emotional tone and the specific words and images that work to achieve your goals.
Before becoming heavily invested in a brand, emotionally or financially, take time to consider the impact of trademark law on your choice. Two key considerations require your attention: a) What are you selling and how does your brand tie to what you are selling? and 2) Are you free to use the brand you like?
1. What are you selling and how does your brand tie to what you are selling?
When you think of what you are selling, what words come to mind? Are your branding words and images descriptive of what you are selling or are they more fanciful? More fanciful marks are more distinctive.
The law considers the distinctiveness of the mark when deciding whether the mark is a protectable trademark, and the level of strength it provides in any trademark protection. Trademarks are stronger legally if they are more distinctive. This is because trademark protection is designed to protect consumers from being confused about the source of the product or service they are buying. The more distinctive the mark, the more likely it conjures up a single source in the minds of the consumer. The law rewards and protects the distinctiveness of the mark to avoid confusion among consumers.
Historically this makes some sense. Prior to the Internet, it was even more difficult to find out whether someone was connected to a specific company or manufacturer. When the snake oil salesman came to town, you needed to know whether he was selling genuine Acme snake oil. By giving Acme a monopoly on the name Acme that was legally enforceable through trademark rights, the consumer could trust that Acme snake oil was produced by Acme and not a fly-by-night operation – at least until Acme became one of the most overused words in business.
Understanding the strength of a mark begins with looking at how distinctive the mark is in relation to the goods or services being offered. On one end of the spectrum are completely fanciful marks made up to serve as a brand name for a product and are considered the legally strongest marks. Think Xerox. On the other end of the spectrum we find generic words that simply describe the product being offered, and thus do not qualify for protection as trademarks. Think widget store. Xerox has risked becoming generic over time as its brand name was so strongly associated with photocopies that people began saying they were “making a Xerox” instead of a “making a copy”. Xerox then had to campaign to remind people that Xerox is a protected name and not a generic reference to making a copy. It did this to protect its trademark rights from becoming as generic as “aspirin.”
Falling between fanciful and generic marks we find
- Arbitrary marks (real words but not usually used in connection with the products being marketed — think Apple for computers);
- Suggestive marks (suggest something about the products or services, but do more than simply describe them, and require a little imagination to put the two together – think BeautyRest which requires a little imagination to think of mattresses providing restful beauty sleep); and
- Descriptive marks (merely describe the goods or services and which garner protection only when the mark has developed a secondary meaning to consumers to identify a source of the product – think International Business Machines for computers). Surnames constitute a subset of descriptive marks that also require secondary meaning to gain protection.
Making these distinctions can seem like splitting hairs, but you can begin thinking where you might want to be on the spectrum. Then balance the legal strength you want with your realistic business and marketing goals (and dollars). Do you need to quickly pull in consumers without spending much on brand recognition? Maybe you are better off using a descriptive mark like “Pembroke Widget Store” and worry about brand protection later.
On the flip side, if you are embarking on a national Internet branding campaign with a national customer base and want a brand name that can easily be registered as a federal trademark, it may be easier to secure the trademark if you make it more fanciful or arbitrary. But before you bet too heavily on becoming the next Apple or Exxon brand, you might want to sit down with a trademark attorney.
2. Are you free to use the brand you like?
Many factors determine if you can legally use the brand you like. The basic question centers on whether or not someone else is using the same or a similar mark to sell the same or similar goods or services in the same geographic market (or a natural expansion of a market). If you are already using a mark when you look at this question, you also need to ask who of you used the mark in commerce first. By the time you are asking this question, you should be planning to sit down with your attorney. Before you do that, you can save yourself some time, money and aggravation if you do some of the legwork to get a preliminary answer to this question on your own.
Start by picking several good choices for your brand and then do a thorough search for similar names out there. Use different spellings or partial words in your search to find similar words. Search multiple locations for the information – state trademark registries, state business or corporation filings, the U.S. Patent and Trademark Office filings (www.uspto.gov), Internet search engines like Google or Yahoo, industry publications and directories, telephone directory listings, and domain name registries. (Do not assume that domain names are the same as trademarks without discussing this with your attorney.)
Cast a broad net over any market segment you might want one day. Once you find a few brand names that seem to work, review them with your attorney and put your marketing savvy together with your legal savvy to launch a brand that will work for your business.
As usual, I offer my blogs as general food for thought and they do not cover nuanced legal issues you should consider in a specific case. They are best used as jumping-off points for further research and discussions with your own legal advisor.
Rebecca Westerlund Coletta, Esq.
Coletta Law Office
620 County Road
Hanson, MA 02341
This column constitutes legal advertising, and is designed only as an information service. While every effort is made to ensure the accuracy of the information, it should not be relied upon as legal advice. Legal advice is only provided after a careful review of the specific facts provided by a client after formation of an attorney-client relationship.