While trademark protection can extend to sounds and smells (e.g., US Reg. No. 5,467,089 for the scent of Play-Doh), a trademark is usually a word or design, or a combination of those it, used to identify products and services and used subsequently to distinguish these goods and services from those of competitors. The most important function of a brand is to cause your target consumers to make an exclusive association between the brand and the products or services you offer.
Not all brands are equal. Some marks are “strong” and therefore entitled to greater protection than “weak” marks. When selecting a brand for the first time, there are important factors to consider that can affect the relative strength of the new brand. “Strong” marks are distinctive, while “weak” marks are merely descriptive or generic.
From strongest to weakest, a brand falls into one of the following categories:
The strongest category is fancy marks, which represent marks that are made-up words. Such a word has no other meaning than its connection with the underlying goods or services. Fancy marks are the strongest marks because there is very little chance that another market player will claim or challenge your use of a word without any prior meaning as a mark. Well-known brands that are fancy brands include PEPSI, VERIZON, and EXXON.
An arbitrary mark uses a word that already exists and has a defined meaning, but its defined meaning is generally not used in connection with the underlying goods or services. The most famous example is APPLE used in connection with electronics (not its dictionary definition for fruit.) Prior to the founding of this tech company, there was little to no association of electronics with the word APPLE. Other brands that use arbitrary marks are AMAZON and AXE. Fancy and arbitrary marks are the strongest marks that exist.
The next category includes suggestive marks, which convey or suggest a certain quality or characteristic of the underlying goods or services but do not explicitly describe them. A suggestive mark forces the consumer to think more or use their imagination to understand their relationship to the underlying product or service. COPPERTONE, suggesting a consumer’s resulting skin tone after using suntan oil, and GREYHOUND, using the name of a fast dog to suggest fast travel services, are examples of suggestive marks. Suggestive marks come second after arbitrary and fanciful marks.
Descriptive marks are usually relatively weak. A descriptive mark instantly communicates the underlying goods or services to the consumer by describing its nature, quality or characteristics. For example, AMERICAN AIRLINES is descriptive because it immediately describes the company’s provision of airline services in America. SCHOLASTIC is descriptive of education and learning from books. Descriptive marks are only protectable if they acquire distinctive character, i.e. the owner of the descriptive mark has used it exclusively for a period long enough for consumers to recognize it as a mark rather than a an ordinary word or phrase. Purely descriptive marks are not eligible for registration in the main register without proof of acquired distinctiveness.
Generic names can never acquire distinctiveness and function as a trademark. For example, the trademark ICE CREAM is not registrable for ice cream products because it would unfairly prevent others from using the common name ICE CREAM to describe ice cream products. A whimsical brand can fall into this category through a process called genericity. Examples of once-fancy brands that are now generic include ESCALATOR, a brand formerly owned by Otis Elevator Company, and ASPIRIN, a brand formerly owned by Bayer.
Although your business may have an easier time marketing and reaching consumers with a descriptive or weaker brand, the value of a brand and brand increases significantly if your business is able to successfully market a whimsical brand. or arbitrary. On the other side of the coin is the risk that your business will outperform, and a once strong brand may lose all rights through the generic unless you carefully monitor to ensure that the general public and the media are using the brand correctly. The owners of XEROX and VELCRO have so far managed to preserve their monopolies over their brands by making such a font.
Guidance from a trademark attorney to navigate the intricacies and nuances of brand selection and adoption is essential at every step of this process. This necessarily includes an overview of a potential brand’s clearance, availability and enforcement challenges before making a significant investment in the new brand.
©2022 Norris McLaughlin PA, All Rights ReservedNational Law Review, Volume XII, Number 98