Trademark

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) marks, and suggestive (suggestive of a characteristic without overtly describing the product) marks. 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 represent 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) is obtained that provides eligibility for federal registration.

While the temptation is strong to label a product or service in a descriptive way, since most consumers would most easily understand the use of the term with the product in this way, this approach is wrong-headed and a bit reckless for any business. Failing to devise a word/term/phrase that is at least suggestive runs the risk of being denied federally registeration, causing legal enforcement of such a mark to be 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 in the form of a valuable asset.