The Trademark Continuum, Part II: The Battle Between Marketing and Legal

This article is the second installment in our series on the trademark continuum of identification.   
In the first installment of this series, we presented a brief overview of the trademark continuum spectrum and how marks are rated on the spectrum based upon their distinctiveness. With this background, we’ll now address the problem that often arises for entrepreneurs and companies trying to name a business, product or service: finding the right mark that balances both ease of identification and legal strength.
Picking a trademark for your new company, product or service can be an exercise in creativity and frustration. The natural inclination is to find some way of describing your product or service that tells consumers what you do, or what your products and services are.  A descriptive name helps keep marketing costs down. Conversely, the more unusual the name, the more upfront marketing dollars and effort will be needed to get consumers to connect the name with your product or service.
For this reason and others, marketing departments and consultants typically prefer names that easily connect with the product or service in the mind of consumers. This approach makes sense because teaching your clients or customers to make a lasting connection with a mark that is fanciful or arbitrary is a costly investment. Entrepreneurs often appreciate a descriptive or suggestive word or phrase as a mark because it requires spending less on marketing from what is probably an already limited budget.
Legally speaking, however, the degree to which a mark is suggestive or descriptive is directly proportional to the strength of legal protection the mark will be afforded under the law. Registration of certain suggestive and descriptive marks may not be possible for the following reasons:

  • the mark may not be inherently distinctive and not enough time has passed for it to have acquired distinctiveness;
  • due to the mark’s non-fanciful nature, others may have already registered similar marks for similar goods or services;
  • the word or phrase is (or has become) generic in relation to your goods or services.

Even if a registration can be obtained for a suggestive or descriptive trademark, it can be difficult to enforce rights in a legally weak mark. This issue sometimes arises when a competitor enters your market using a brand that is similar to yours. A common defense in situations like this is to claim that the registrant’s rights in their mark are narrow and weak due to their suggestive or descriptive nature.  The legal strength of a trademark can also come up as an issue when valuing your company.  Potential investors, buyers or licensees typically assign a low value to legally weak trademarks.
Striking a balance between a brand that (a) tells consumers something about who you are, what you do, or what you sell on the one hand with (b) the ability to have meaningful legal protection that can be used effectively against copycats, competitors and infringers is a complicated undertaking. Choosing a mark that is descriptive of your product or service may gain you traction in the marketplace in the short term, but in the long run may end up being a costly mistake if it is ever challenged. Descriptive marks are weak, and weak marks are difficult to enforce.
When choosing a brand, there should always be a legal voice at the table to evaluate the potential strength of the mark(s) you choose.  Our firm has experience in helping clients choose legally strong brands.  If you already have selected a trademark, we would welcome the opportunity to evaluate its legal strength. Choosing trademarks that are not only legally secure but also convey the desired impression on consumers should set your business off on the right foot with a high degree of comfort and confidence.

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