There are many factors business owners overlook when deciding the best trademark for their brand. Early careful consideration of brand selection may result in financial savings, improve your competitive position and avoid expensive legal complications.
The Difference Between a Distinctive and Descriptive Trademark
An important aspect of that selection process is choosing between a descriptive or distinctive brand or trademark. A distinctive trademark does not describe the nature or qualities of goods or services. Trademarks have a range of distinctiveness that is often thought of on a spectrum from the non-protectable generic term, SWEET for sugar, to the inherently distinctive KODAK or EXXON which have no meaning. A distinctive mark is easier to register and easier to enforce. The more descriptive the mark, the weaker, harder to register and harder to enforce.
A descriptive mark may not be legally protectable and lack trademark significance when first used. Descriptive marks may only be protected after years of expensive advertising where they acquire a secondary meaning. Examples of recent cases in which marks were considered descriptive include:
· WELL LIVING LAB as descriptive of research service.
· HOUSEBOAT BLOB as descriptive of inflatable mattresses.
· YOUR CLOUD as descriptive of cloud computing related services
· PERFORMANCE as descriptive of nutritional supplements
The Importance of Distinctive Brands
To understand why distinctiveness is important , consider the basic purpose of trademark law. Trademarks are about consumer perception – how a consumer perceives brands. A trademark describes to the consumer the source of goods or services, rather than telling the consumer what are the goods or services. The trademark tells the consumer who is the manufacturer, distributor, or licensor. Marks give consumers confidence goods or services with the same brand have a consistent quality. One restaurant’s happily satisfied customer is more likely to be disappointed with a similarly named restaurant, not managed by the same restaurateur.
How to Best Market a Distinctive Trademark
There is a tendency for companies to select descriptive marks to brand their products or services. Marketing firms may encourage this to avoid teaching consumers about the product. Ideally, a company uses a distinctive mark as an adjective followed by noun which is a common descriptive term for the goods . That way there will be strong protection for the mark, yet the consumer will be able to identify the goods as well as the brand. For example, if the goods are breakfast cereal, the mark may be GRUNCHER but it can be followed up with a common commercial term for the goods, thus GRUNCHER™ Corn Flakes. GRUNCHER as a trademark distinguishes the goods from other distributors of similar products. If the goods were simply called Corn Flakes, there would be no ability to build up good will through sales of the corn flakes.
Government trademark offices that register trademarks around the world, such as the U.S. Patent and Trademark Office and courts will not protect descriptive marks for several public policy reasons. First, there are only so many ways that a particular type of certain goods may be described. The public interest may require the use of descriptive terms by competitors. Finally, the ultimate purpose of a trademark is to be able to allow the consumer to distinguish the source of goods. But naming a type of goods in a descriptive manner does nothing to help the consumer distinguish the source of goods, but only the type of goods being sold. The lesson – try to brand your product or service with a distinctive and non-descriptive term.