06 Feb The Making of a Strong Trademark
Companies who are looking to build a brand should also be thinking about trademarks and how to create a strong trademark. When I am consulted as an attorney, I am often asked about what goes into a strong trademark. So before launching into what a strong trademark is, I should set the stage for intellectual property in general, because there is often confusion.
Patents: Patents are for inventions that have a useful purpose. The patent does require some novelty and definite useful purpose, but it doesn’t have to be currently operational. For example, Boeing obtained a patent for a force field, like those talked about in Star Trek, Star Wars, and other science fiction movies. It is not operational and some think it won’t ever be operational, at least as conceived. But when it comes to science I have learned never to say never. Patents are available for a limited duration.
Copyrights: Copyright protection is available for the expression of an idea in a fixed medium. What is protected is the expression of the idea, not the idea itself. That is why you can have twenty different books talking about the same idea, but not run into problems of copyright infringement. Copyrights are also available for a semi-fixed duration for human authors, generally, the life of the creator plus 70 years. The propriety of that time frame is of some debate.
Trademarks: Trademark protection is available for things that operate as a source identifier for goods and services in the marketplace. There are a couple of functional requirements, including that the trademark is for products are that actually offered in the marketplace or stream of commerce. Unlike patents and copyrights, a trademark lasts forever assuming the trademark is still being used in commerce, even in a limited fashion.
Okay, after that little primer, the best way to think of a trademark is a shortcut in the brain. We see the Swoosh of Nike and we know who the company is, generally what they sell, and have an opinion of the quality of the goods. The Swoosh represents a shortcut in our brain to the Nike Company, but it is not an idea that is used for commerce but to identify the origin of goods.
So returning to our initial question, what makes a good trademark mark? Something that is distinctive, that sets the company’s goods and services apart from those of competing firms. Trademarks descriptively fall into five broad categories, which from weakest to strongest are:
Generic–these marks simply use a word that means what it is, such as a trademark for Bread for bread. These marks have not distinctive meaning.
Descriptive–these marks usually describe a feature or characteristics of the product or service, such as “fast-drying” for quick dry paints, for example.
Suggestive–these marks use words or images that suggest what the product is, but don’t necessarily describe the product or service.
Arbitrary–these marks use common words in unexpected ways or ways that have no direct, logical connection to the product or services. A great example is Apple for computers.
Fanciful–these marks are generally made up words or words that have no meaning other than for the product or services, such as Xerox.
Generic trademarks will almost never get approval.
Descriptive marks may get registered if the mark has achieved a secondary level of distinctiveness. For example, American Airlines was initially denied registration because American was just descriptive of the source, being the United States of America. But over time, the brand achieved a distinctiveness separate and apart from the words and thus was registered.
Suggestive marks will often get registered if the application shows some standard of distinctiveness. Burger King is a helpful example. Burger King suggests the sale of hamburgers and related food items. But if you look at its early logos and branding, it was not clear that Burger King was a fast food restaurant, which is the goods and services it supplies. It suggests food but doesn’t suggest fast food.
Arbitrary and Fanciful marks often get registered because there is a little overt connection between the goods and services, and the trademarks chosen. For example, no one is going to confuse an apple you eat with an Apple iPhone. So the arbitrary connections have to be built in the consumer’s mind, which takes effort. Similar, fanciful marks also have to generate a mental connection for consumers through use and advertising. Because fanciful marks don’t exist outside the commercial world, their function as a source identifier is particularly strong.
All trademarks fall on a spectrum, so it is not always easy to simply categorize a trademark in one of those categories, but they do provide help.
Other trademarks exist as well but usually take some effort to create. For example, if you ever buy Tiffany jewelry, you get the items in that distinctive blue box. That blue is trademarked by Tiffany & Co. and that blue cannot be used in the jewelry industry, but the blue can be used in other trademarks as well, with some caveats. That unique sound combination used by ESPN for their news updates is likewise trademarked as a source identifier for the worldwide leader in sports. Finally, you can also trademark scents. I would love to interview the examiner who is responsible for managing that application process.
Building a quality trademark and one that is strong and distinct is not just about branding or images or colors. It takes an understanding of what can and cannot be trademarked, and what makes a good mark. The trade-off for companies is that arbitrary marks and fanciful marks take a more significant branding campaign and money to generate the connection in consumer’s minds. Nike wasn’t built in a week.
For more information on whether your trademark idea would be a good trademark or not, give me a call.
What trademarks have you seen that are strong in your mind? What have you seen that looks like an obvious rip-off but you can’t imagine that is a problem?