BRANDAIDE GUIDE to TRADMARK SELECTION Does Your Trademark Qualify for Federal Registration?

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BRANDAIDE GUIDE TO TRADMARK SELECTION Does your Trademark Qualify for Federal Registration?

CHERYL HODGSON, J.D Your Guide to Trademark Selection

Cheryl Hodgson CEO & Founder

This white paper provides you with a detailed guide to understanding the types of trademarks, examples of each, and where the land on the “Trademark Continuum” of legal protection. Review and use this guide whenever you are about to select a new brand name, before you commit to and invest in a new trademark. Make certain your choice qualifies for legal protection!

WHEN LEGAL PROTECTION MEETS TRADEMARK SELECTION, IT WILL BE A GREAT MARRIAGE

A strong trademark is vital to the brand building process. When selecting a trademark to marry to your brand values and message, it’s important to know whether your chosen name can be legally registered and enforced against third party users in the market. The ability to protect your mark should inform your final trademark selection.

Knowing where a prospective mark lands on the trademark continuum can mean the difference between owning a valuable brand name, and a worthless descriptive or generic term that cannot function as a trademark.

The trademark continuum is a framework used by brand protection professionals in the trademark selection process to determine the degree of protection afforded to any given term. The strength (and hence, degree) of legal protection is based on a series of labels: coined, arbitrary, suggestive, descriptive, and generic.

Greater risks, as well as increased legal and marketing costs are associated with a weak selection. Conversely, the larger the egg, the greater the potential for increased brand value—and the less you will pay to protect and enforce the mark.

Some terms fit neatly into a clear category, others are more difficult to analyze and fall into the high-risk category. The further along the continuum one moves, the less protection courts afford to the brand. For example, if a mark is descriptive, the owner will be unable to stop third parties from using the mark unless the brand owner can also gather and produce expensive evidence that proves to a court that consumers recognize the mark as being associated with your goods and services. This is a costly yet easily avoidable risk.

THE TYPES OF MARKS AND WHERE THEY LAND ON THE CONTINUUM

Coined or Fanciful

Coined and fanciful marks are terms that are coined or conjured up to function as trademarks. This means you create it. The name does not exist prior to your creating it. They are inherently distinctive. A coined mark is entitled to the greatest degrees of trademark protection.

ALTOIDS® ALTOIDS® is one of the oldest trademarks still in use. It was first used in the nineteenth century! No wonder it is known by its tagline (which is also a strong mark):

XEROX Another well-known coined mark is Xerox. Xerox was created from the word xerography, from a Greek term meaning dry writing. Chester Carlson was a patent attorney who was smart enough to know at the time that he needed to have a very strong trademark. He went out and he created one. Xerox is such a great example because the founder also created the generic term to go with the trademark, “the photocopy machine.” Especially when one has a new revolutionary product like the photocopier was, there is also a need to manage and educate the consumer as to the proper use of your trademark. Otherwise there is the risk the trademark can be come identified as the generic term of the product and fall drop down to become generic, and hence not at all protectable.

Then you have your trademark “XEROX photocopier” or “photocopy machine.” The risk is that when you do not include the generic noun for the product, the trademark itself becomes the word used by the public as the name of the product. Xerox was such a revolutionary product, the Xerox photocopier, it became a victim of its own success.

© Copyright 2019 Chipotle Entertainment, LLC www.brandaide.com Arbitrary An everyday word, picture, or symbol in common use can be applied in an arbitrary manner to goods and services that are unrelated to the term being used as a mark. These result in a strong mark.

APPLE Apple and the famous bitten apple logo are arguably the world’s strongest arbitrary marks.

Suggestive Terms that suggest but do not describe the qualities, ingredients, or characteristics of a product are great marks, if you can find one! A suggestive mark is inherently distinctive, one of the strongest marks of all. Selection of a suggestive mark can be tricky because the fine line between a descriptive and suggestive mark is much like a fence. If you land on the wrong side, you end up in a different neighborhood.

If you and on the wrong side of the fence, SUGGESTIVE your selection is worthless. The task of selecting a distinctive, suggestive mark is all the more challenging for new brand DESCRIPTIVE owners who naturally gravitate toward descriptive terms. After all, they want customers to understand what the company is offering. However, describing the product or services offered under your brand name is best left to advertising and marketing materials, not your brand name.

© Copyright 2019 Chipotle Entertainment, LLC www.brandaide.com INTERIOR ALIGNMENT INTERIOR ALIGNMENT is one of those rare, very strong suggestive marks. It is an example of the 13-15% of all applications that are approved with no objection at all. It sailed through the rigorous Trademark Office examination process. As such, it became one of few applications filed at the US Trademark Office that are immediately approved and passed for registration without any objections or the need for amendments. Today, Interior Alignment is a strong, distinctive, and well- protected brand name in its field.

Descriptive

A descriptive mark is one that describes the intended purpose, function, or use of the goods. It can describe a class of users, the nature of the goods, the end effect upon the user, or desirable characteristic of the goods and services. Words that describe the qualities, ingredients, or characteristics of a product are also descriptive. Descriptive terms may not be enforced as trademarks absent proof of acquired distinctiveness.

© Copyright 2019 Chipotle Entertainment, LLC www.brandaide.com Acquired distinctiveness requires substantial evidence that consumers recognize the name and associate it exclusively with your products or services. In the example, iPad was held descriptive. The first user could not prove acquired distinctiveness when it sued Apple, but APPLE was able to do so because of the millions it spent in advertising. Not many companies can afford to meet that burden. If you can’t then I advise to select a distinctive brand name before you launch. Applications to register terms that are descriptive routinely receive a rejection from the Trademark Office. The Trademark Office may offer the owner to be listed on the on the Supplemental Register. At the end of five years, the registrant can submit evidence that the mark has become distinctive and be allowed to move the registration to the Principal Register.

However, you must first prove the mark has achieved popularity and is recognized by consumers for the goods or services being offered to the public. This requires a costly uphill legal battle should the need arise to enforce the mark against third parties, all before the owner even has the right to put on evidence against the infringer.

A few years ago, “American Blinds” tried to sue Google for selling its trademark “American Blinds” as an AdWord to American’s competitors. Google was able to have the case thrown out. The judge agreed with Google that American Blinds was descriptive and could not be protected. Despite years of use and advertising, and lots of money spent to proved the public knew the name, it was all for naught.

Q. Which of these started out as descriptive but became protectible because of success?*

* American Airlines

Generic

Generic terms are those words that are the name for the product. “Apple” for fruit is generic (but not for computers or iPhones). So is “Hotels.com” for hotels. Generic terms are not trademarks and will never be protected when applied to the goods or services they represent. Hotels.com has no rights in the word hotels because the site offers hotel reservations, which makes its term generic in terms of the services offered.

© Copyright 2019 Chipotle Entertainment, LLC www.brandaide.com In summary, adoption and use of a descriptive term as a trademark leads to two problems that many owners can never overcome. First, registration is difficult if not impossible. And resulting registrations are often not worth the paper they are printed on. The owner operates under a somewhat delusional belief that a mark is protected and then learns otherwise when confronted with a real problem in the marketplace.

SUMMARY

In summary, adoption and use of a descriptive term as a trademark leads to two problems that many owners can never overcome. First, registration is difficult if not impossible. And resulting registrations are often not worth the paper they are printed on. The owner operates under a somewhat delusional belief that a mark is protected and then learns otherwise when confronted with a real problem in the marketplace.

Second, enforcement proceedings are more expensive and results less certain because the courts require a much higher standard of proof of acquired distinctiveness before granting protection. Opponents will exploit this weakness to its fullest.

Consult a qualified professional trademark attorney to counsel with a professional advisor and make certain the name you choose can be protected before investing such time and effort into advertising and marketing a brand name you can never own or protect.

Proper Selection and Protection make great bedfellows! Now it’s turn to craft the ending to your own brand story—choose wisely and to make certain you will look back and say, it is

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