Choosing a Brand
Part I – Choosing a Strong Mark
Brands are everywhere. Any day you can go shopping at MACY’S® or SAKS FIFTH AVENUE® to buy a RALPH LAUREN® or LACOSTE® shirt, OAKLEY® or RAY BAN® sunglasses and COOL WATER® cologne. You can go around the corner to the STARBUCKS® café in the local BARNES & NOBLE® bookstore for a cup of coffee and sit and read the WALL STREET JOURNAL® or the latest issue of SPORTS ILLUSTRATED®. You can get into your PORSCHE® and call your wife using your APPLE® iPHONE® and BLUETOOTH® headset, and fill up your car at the SUNOCO® gas station. These are only a few of the many brands that we see, hear, smell, taste and feel every day. These brands composed of words, phrases, names, symbols, logos, sounds or designs are used to identify and distinguish one’s goods (trademark) or services (service mark) and many brands function as both trademarks and service marks at the same time. A brand such as McDonald’s® can be a trademark (for food), a service mark (for restaurant services), and a trade name (for the business itself) at the same time. The trade name merely being the name of a business used to distinguish that business from others.
The most effective way to protect the brand is to seek to obtain a federal registration with the United States Patent and Trademark Office (the “USPTO”). Generally speaking and specifically for registration purposes, the brand should ideally be as “inherently distinctive” as possible in order for the USPTO to approve registration. The USPTO views the strength of a mark on a scale of distinctiveness, with generic terms at one extreme and arbitrary and fanciful marks at the more desirable opposite extreme.
Generic terms include the common names for goods, such as PAPER for paper or CAFÉ for restaurant services; these terms are not likely to distinguish any goods or services from others and therefore they would not be given protection as trademarks or service marks.
The next level of mark includes descriptive marks and suggestive marks. Descriptive marks which are stronger than generic marks describe one or more characteristics of the goods or services, such as SPUN COTTON for intimate apparel. It is difficult to register and to enforce exclusivity of descriptive marks unless the owner can demonstrate that the mark has acquired distinctiveness or secondary meaning due to extensive use and publication of the mark. The public must associate this mark with the particular source of the goods or services. Marks that are primarily surnames such as LEE NAILS are treated as descriptive marks and must also demonstrate that the mark has acquired distinctiveness or secondary meaning due to extensive use and publication of the mark.
Suggestive marks suggest (instead of describe) one or more of the characteristics of the goods or services they are intended to identify. Some famous suggestive marks are IVORY® for soap, COPPERTONE® for suntan lotion, or MUSTANG® for cars. For this type of mark you do not need to prove that the mark has secondary meaning or acquired distinctiveness in order to meet the standards of registration and protection.
The strongest marks and the marks that are most easily registered are arbitrary and fanciful marks, which bear no apparent relationship to the goods or services they identify. An arbitrary mark employs an ordinary term that is unrelated to the product, such as GREY GOOSE® for vodka, TIDE® for detergent, CAMEL® for cigarettes or SUN® for computers, while a fanciful mark uses an invented term with no ordinary meaning such as EXXON® for gas, XEROX® for copiers, or KODAK® or POLAROID® for cameras. These types of marks are granted the widest range of legal protection as they are considered the most inherently distinctive.
From this we can learn that when choosing a brand, it is important to ensure that the brand consists of a strong mark. However, choosing a strong brand name is only the first step towards ensuring that the brand is available for registration and acquiring exclusive rights to such a brand. In part two of this series we will discuss how to ensure that a mark is available for use and registration.
Simon Bock is an intellectual property attorney at Schwell Wimpfheimer & Associates LLP. He represents clients in various intellectual property matters, including: trademark and copyright clearance, protection and enforcement; intellectual property litigation and licensing; intellectual property transactional due diligence; and agreement drafting related to mergers, acquisitions and IP securitization. Simon can be reached at sbock@swalegal.com or 516 524 2414.
This SWA publication is intended for informational purposes and should not be regarded as legal advice. For more information about the issues included in this publication, please contact Simon Bock . The invitation to contact is not to be construed as a solicitation for legal work. Any new attorney/client relationship will be confirmed in writing.
Filed Under: Intellectual Property , Publications , Trademarks
