An extremely crucial component of your branding strategy is the selection of the actual brand name or trademark itself. Aside from the plethora of marketing considerations, do you want to select a relatively descriptive trademark that strongly alludes to, rather than directly describes, your goods and/or services? A mark that strongly alludes can acquire significant marketing benefits from the laudatory and promotional connotations that it conveys.
Or do you want to select an inherently distinctive trademark that has a high chance of being registered and will strengthen your position in the event of any litigation? These are all crucial questions that need to be addressed as early as possible in the planning process.
Let us consider the “spectrum of distinctiveness” concept that was created from Abercrombie & Fitch Co. v. Hunting World. This case categorized marks into the following segments:
Fanciful marks: Invented words. Prima facie registrable. Examples: Nike, Kodak.
Arbitrary marks: Have a common meaning but not pertaining towards the mark’s goods and/or services. Examples: Apple on computers, Camel on cigarettes.
Suggestive marks: Suggest or alludes to the nature of the goods and/or services however does not directly describe them. Examples: 7-Eleven on convenience stores that are open from 7 am to 11 pm, Coppertone on suntan lotion.
Descriptive marks: Words that directly describe the goods and/or services. Examples: Best Value on retail and wholesale of motor vehicles, Sparking Clean on window cleaning preparations.
Generic terms: Common words to refer to a good or service that can never function as a trademark. Examples: Social network, Email.
Therefore the registrability of a mark can be thought of as a continuum, with inherently distinctive marks at one end and descriptive or generic marks at the other end, and suggestive or arbitrary marks between these two points.
The level of inherent distinctiveness of any trademark depends on the goods and/or services that the application contains. While Apple is inherently distinctive on class 9 computer goods, it will be deemed descriptive on class 31 “fresh apples” or class 31 “fresh fruit” or class 29 “processed fruits” or class 32 “fruit juice”.
If you are applying for an inherently descriptive trademark, there is an option to claim acquired distinctiveness. Acquired distinctiveness means that consumers now directly associate the trademark with the applicant due to extensive use and advertising of the trademark.
The types of evidence of use that can be submitted include advertising and promotional materials that show the trademark being used, exact dollar amounts of these advertising and promotional activities, and surveys or other evidence that show that the trademark is functioning as a badge of origin in the marketplace.
It is important to bear in mind that an attempt to claim acquired distinctiveness on an extremely descriptive term will be extremely difficult even if the trademark has been extensively used and promoted in the marketplace. Conversely, proving acquired distinctiveness on an allusive or suggestive mark will be correspondingly less difficult.
TMpedia recommends this trade mark law firm who has been personally endorsed by the Shark Tank’s Kevin O’Leary. They offer a money-back guarantee if your trade mark is not approved by the USPTO.