By: Cameron Watson
Trademarking is a valuable tool for ensuring the success of any business and something that businesses should consider from the get-go to stop potential infringing parties. For that reason, every business must balance the competing ideologies of whether they want a brand that is more marketable or more trademarkable. For instance, who wouldn’t want to own apple branded apples? It is exceedingly marketable: the moment someone sees your brand, they know what you sell. Unfortunately, this term would be found generic, and unprotectable under trademark law; put another way, not trademarkable. That means ANYONE can use it against your wishes.
Trademarks generally fall into three categories offering varying degrees of protectability and distinctiveness. These categories, which generally scale from most marketable to most enforceable, are (1) generic; (2) descriptive; and (3) suggestive, arbitrary, or fanciful. As stated above, generic marks offer zero protection (i.e., not trademarkable). One cannot exclude others from calling their apples, apples or their cars, cars.
The second category is descriptive mark or marks that are not inherently distinctive such as marks that are primarily a surname. Although these marks can offer the full protections, descriptive marks are often difficult to trademark due to the requirement that they gain secondary meaning in the marketplace. An example of a descriptive mark that is well-known is Coca-Cola®. The name is descriptive of the cola-based soft drink. To state it simply, a descriptive mark becomes trademarkable when consumers can identify the name as a source identifier. For instance, when someone says McDonald’s®, the average person thinks of the fast food chain, and not the surname. This need for secondary meaning makes names like “Creamy” for yogurt not advisable. In order to trademark a descriptive mark for a starting business, one could potentially expend mountains of capital in advertising alone trying to meet this secondary meaning requirement. Although a business is likely to save expenses on the marketing front, subsequent enforcement of the mark is likely to be expensive and protracted in light of its weak distinctiveness.
Moreover, a descriptive trademark without secondary meaning is not registerable under the principal registry, which is the registry that offers the full protection of trademark law. However, one can still register with the supplemental registry, which acts as a placeholder while you build your brand (i.e., secondary meaning). As such, the supplemental registry is a good starting point. Once on the principal registry, the owner of the mark has many protections under the federal statutory scheme, including: constructive use as to the entire country (common law generally limits trademarks to the geographic area of actual use); prima facie evidence of validity; statutory remedies and enforcement tools; potential incontestable status; constructive notice of ownership; unauthorized importation protections; and searchability in the federal registry.
As a mark gets more distinctive, many lose marketing appeal but gain increased strength as a trademark. The last category of marks, because of the distinctiveness, does not require secondary meaning to join the principal registry. As a compromise, suggestive marks provide a balance between the marketing ideology and the enforcement ideology by subtly hinting at the goods or services. An example of a suggestive trademark is PlayStation® for identifying a video-game console, or Bing.com® for identifying a search engine. An arbitrary mark is an existing word or symbol that has no connection to the goods or services, such as, Apple® for computers, or Camel® for cigarettes. A fanciful mark, likewise, does not have a logical connection to the goods or services and includes examples like Exxon or Xerox.
To be clear, selecting a mark for one’s goods or services is just the first step that requires a knowledge of many legal and business concerns. There are many roadblocks to registering a trademark that requires a well-trained attorney to assist. With that said, trademarking is a valuable tool for ensuring the success of any business and something that businesses should consider from the get-go to stop potential infringing parties.
Cameron Watson focuses on Business and Corporate, Government Liability Defense, Employment, Products Liability, Insurance, Litigation and General Liability, Premises Liability, and Trademark and Intellectual Property law in the Memphis office.
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