“Many a small thing has been made large by the right kind of advertising.”
– Mark Twain
Developing effective and protected branding is critical to advertising and sales. Protecting your branding with federal trademark registrations provides you with valuable legal tools to prevent your competition from using confusingly similar branding. Over time your federal trademark registrations can be worth almost as much as the rest of the company.
When you are choosing the terms used for branding your business and naming your products, it’s a good idea to think about what you can and cannot protect with a federal trademark registration. It is definitely a good idea to have the attorneys of Garcia-Zamor research your new potential brand to determine whether another business has trademarked or is using confusingly similar branding/phrases for similar goods and services. Skipping the research may set you up for future frustration and even litigation. To be granted your trademark, the US Patent and Trademark Office (USPTO) must make sure that your brand meets several criteria. One criteria is that your trademark is distinctive when used with your service or product and capable of indicating the source of your goods and services without creating consumer confusion. This essentially means that no other similar products and services are using the same or similar branding.
This doesn’t mean that your brand must be completely unique; it just means that your branding must be distinct from other trademark registrations and applications for similar or related goods and services. If you want to name your cookware company Springfield Culinary you probably don’t need to worry about the Springfield Fiber Optics company, since the goods and services of the two companies are sold through different channels of trade. Consumers also typically use a high level of care when buying wholesale fiber optic bundles for commercial installations – thus, there is a very low probability of confusion in the marketplace. However, you may have trouble protecting the brand Springfield Culinary if there is a federally registered trademark for Springfield Gourmet.
The best strategy is to try to brainstorm multiple brands that may qualify for trademark protection. Once a favorite is found, it then makes sense to have the attorneys of Garcia-Zamor conduct a trademark search and prepare a written opinion to determine if it is a reasonable business risk to proceed with use of the brand in the marketplace. If the research indicates that it is reasonable to proceed, then it makes sense to file a federal trademark registration for your brand to protect against future imitators.
Let’s go back to the beginning and examine considerations to keep in mind when selecting a few brands before settling on a favorite. Part of picking good potential brands is knowing which ones could provide the best protection.
The Strongest Marks/Brands
The strongest and easiest to protect brands/trademarks are called fanciful marks. These marks contain made-up words that have no dictionary definition, and are easier to protect because the brands will likely only ever refer to your service or product. The downside to fanciful marks is that they will not be effective if the public can’t remember the name or won’t know how to spell it. Additionally, people may have trouble remembering what products or services are sold under the brand when they only hear the brand name.
Arbitrary marks may help you avoid the problem of the public not remembering your brand. These marks are made up of real words that don’t describe your product in any way. This tends to be easier to remember as people will already be familiar with the words that make up your brand — they just might not always first associate the brand with your products. This may not be a problem depending on your marketing plans and can still result in a strong, defensible trademark.
One downside to fanciful and arbitrary brands is that they require the most advertising for consumers to begin to remember and associate with your goods and services. For startups, the amount of financial resources necessary to successfully educate consumers may make fanciful and arbitrary brands less desirable.
If you are concerned about your consumer base recognizing your brand, you may opt for a descriptive trademark. These trademarks actually describe the product. However, descriptive marks are more likely to be turned down by the trademark office. You must be able to prove that the term is distinctive to your product to receive a trademark. This is often done by use in commerce. These marks are much harder to enforce and may cost you more money in the long run.
Generic words cannot be trademarked. You can’t trademark words like Cake or Sweaters, since they are not distinctive to your product. You are much more likely to be able to use and protect a more unique trademark. Keep in mind that over time, even fanciful trademarks may become harder to police. If the general public strongly associates your brand with a particular kind of product and you don’t police the usage of it to describe other brands, over time you may lose your trademark. This is part of the reason why it is so important to enforce your trademark.
What can a Small Start-Up do?
One branding alternative to consider for start-ups is to consider brands that are considered suggestive. Please look at our earlier article for more about this type of brand.
If you have questions regarding trademark law, including what sort of terms can be trademarked and how to begin the trademark process, contact Garcia-Zamor today to get assistance from a law firm that has been in business for over two decades.