Businesses - Branding and Trademarks

There are at least a couple of different schools of thought regarding branding, much of it divorced from the question of trademark protection.  For example, there are several sources that advise business owners to consider naming or labeling a product with a descriptive title (e.g., "Discount Furniture"), but this ignores the trouble lurking for the business down-the-road. In the hierarchy of trademark protection, fanciful (coined/invented) marks enjoy the greatest strength and protection against conflicting use(s) and/or attack, followed by arbitrary (no connection between term and product), and suggestive (suggestive of a characteristic without overtly describing the product).  Any term/phrase falling within these three categories are considered strong marks.

On the opposite end of the hierarchy are generic terms - words/phrases that defines the good (or service), such as escalator or elevator.

And then there is the category of descriptive marks.  Not quite generic and not quite suggestive.  Descriptive marks are not inherently distinctive and require extensive use for some period of time before acquired distinctiveness (secondary meaning) builds that allows the former descriptive mark to be eligible for federal registration.

While the temptation is strong to label a product or service in a descriptive way, since most consumers would understand the use of the term with the product in this way, this approach is wrong-headed and a bit reckless with a business that one is using to generate profit.  Failing to devise a word/term/phrase that is at least suggestive runs the risk of being unable to federally register the mark, making enforcement of such a mark problematic, along with not realizing the full-breadth of protections and advantages that registration allows under federal law.

Alternatively, with sufficient time, thought, and consideration, a mark that is at least suggestive will open up all the doors to the entrepreneur: utilizing an identifiable and memorable brand;  using a mark that is capable of federal registration; and possessing a mark that is poised to grow and obtain increasing goodwill from consumers that adds value to the business as an on-going venture and as a potential target for sell, acquisition, or strategic alliance.

Intellectual Property & You (Taylor Swift)

Like or dislike her music, Taylor Swift is one of the few singer/songwriters presently achieving mega-sales, having now crossed-over from country-pop to super-pop-star status with the recent smash 1989.  In glossing over the very recent reports of Taylor Swift's rebuke of Apple's proposal not to pay (performing rights organizations on behalf of producers and writers) during its three-month free trial of a new streaming service, and Apple's subsequent reversal, I ran across this interesting tidbit:  in late Oct. 2014, Swift had applied for multiple (40) trademark applications based on song lyrics.^[1] Although this has been misreported as Swift having "trademarked" five lyrical phrases, when in fact these were "intent to use" (ITU) filings^[2] without any registering decisions made from the US Patent and Trademark Office, it certainly shows a keen attentiveness to the value of her intellectual property regardless of form or media at issue.  Seemingly ripping a page from the KISS (Gene Simmons/Paul Stanley) playbook, and then like a creative coach tweaking the play, Swift has taken some of the more popular (catch-phrase type) lyrics from the collection of songs found on 1989 and filed these ITU applications to further monetize the lyrics beyond the digital downloads and net-streaming revenue available for artists.  While I wouldn't expect a Taylor Swift casket, or for Swift's name to become the nickname of an Arena Football League franchise, Swift's aggressiveness with this type of branding and marketing may know few bounds.

Footnotes

1. The lyrical phrases "Part Like It's 1989" and "This Sick Beat" are taken from the hit song "Shake It Off"; Swift filed intent-to-use applications for both phrases, and each phrase was filed in 16 separate classes of goods and/or services (or 32 applications in total). Three other phrases, "Cause We Never Go Out Of Style" (3 classes of goods/services), "Could Show You Incredible Things" (3 classes of goods/services), and "Nice to Meet You. Where Have You Been?" (2 classes of goods/services), were each taken from the hit song "Blank Space", comprising the remaining applications of the 40 filed by Swift. 2. An "intent-to-use" (ITU) application is designated as a "1B" application and signifies that the applicant has a bona fide intent-to-use the mark in interstate commerce in the future and in association with the goods and/or services identified, but no present interstate commerce usage exists as of the filing. An ITU application for a mark, if approved, requires that the applicant eventually start using the mark in interstate commerce or forfeit the right to use the mark exclusively in those classes of goods and/or services.