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What makes a “defensible” Trademark?

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What makes a “defensible” Trademark?

October 28, 2019

Not all names are equally suitable for brands, from a legal perspective. In this article, we explore what makes for a strong and defensible trademark in the eyes of the law.

When you select a name for your company, brand or service, you typically have your ‘marketing hat’ on. Perhaps you want your brand to sound professional, or maybe you need it to exude a fun, energetic vibe. You pick a name considering the market segment and target audience for what you are going to sell. You typically think in terms of creating an identity of your offering, from the perspective of the marketing department.

If every person building a brand were allowed to pick the name of their choice, overlapping or too-similar brand names would cause confusion and chaos in the marketplace. Think about candy for a moment. Can you imagine the confusion among consumers if four candy companies pick the names “DELISH”, “DELYSH”, “DELICIOUS”, and “DELLYCIOUS” for their four candy brands?

Such overlaps might be innocent, or they might be on purpose if a small player is trying to imitate a more popular brand. This is why the trademark office has laws, rules and suggestions on how to name your brand. If you follow these rules, your brand’s trademark becomes more “defensible” in the eye of the law.

Some of the rules are fairly understandable – don’t use the name of an existing brand, even if it does not currently trade within your country. But other rules are not that obvious – will you be sued if you name your candy after how it tastes?

Let’s look at how to come up with a “defensible” brand name, using examples from candy brand names.

1. Make up a new word.

In trademark law, a good trademark needs to be “distinctive”. This means it is clearly different from other brand names for similar products. The best way to ensure your brand is “distinctive” is to create a new word in such an imaginative way that the world has never seen the word before.

Ideally the term should be entirely made-up, and not even be found in a dictionary. PEZ is a great example of a made-up term used as a candy brand. PEZ is a brand of peppermints, and the term was invented the Austrian spelling, “PfeffErminZ”.

Such terms are called “fanciful” or “coined” by lawyers, and make the best defensible marks.

2. Pick up an entirely unrelated word.

If you can’t make up a word, pick one that is absolutely unrelated to your field. In trademark law, such terms are called arbitrary marks. To continue our candy example, the term JOLLY RANCHER is arbitrary. It relates to raising livestock on a ranch, and has no obvious connection with candy.

Such arbitrary marks are also quite defensible, as long as anyone using the mark in another field does not object initially.

To avoid disputes about what consists of the same field and what are different fields, the trademark office maintains a list of goods and services, which they call “classes”. Things within one ‘class’ are considered similar, so you should identify the class for your offering. A simple way to get started with this is to look at trademark classes of your competitors.

3. Pick a term that is suggestive of desirable features in your product.

Fanciful and arbitrary marks may be the most defensible trademarks, but marketers might face a tough task with introducing your new word to the world. Making up a new word requires the budget to popularize your new word to the point that people start recognizing it.

As a marketer, what you desire is a brand name that can quickly convey some concepts to potential users. Anyone reading SOUR PUNCH on a candy wrapper immediately understands that this candy is going to be tart and will pack a punch!

This suggestive name might not always be a super-defensible name in the eyes of the law. There still exists the small possibility that a competitor might be able to convince the trademark office that a “sour punch” is descriptive. But generally speaking, suggestive names are a good balance between being market-friendly and legally defensible.

4. Avoid words that describe products or services like yours

A trademark for a term gives the trademark-holder a legal monopoly over that term. They can legally prevent others from using that word in reference to similar products.

But imagine if a candy maker was given a trademark for the term “SOUR”. They could then legally stop any other candy makers from calling their own products sour, no matter how sour the other candies were! This is because SOUR is a term that describes candy. In most circumstances, the trademark office will not grant trademarks that are descriptive.

This restriction only applies to words which are generally used to describe the product or service. Some kinds of candies can generally be described as sour. But this restriction on SOUR does not hold in the case of something unrelated to taste, for example cars, which are not typically described by taste.  You could make a car and call it SOUR, and that trademark would not be refused for being descriptive.

5. Absolutely avoid words that are just the name of what the product is called

The worst kind of brand name you could use would be just calling your candy CANDY or CANDI. These kind of names are called generic marks, and will almost certainly be refused by any trademark registry. Even if they are accepted for a while, defending them would be an uphill task when another candy-maker challenges you.

 

The “Abercrombie” Spectrum of Distinctiveness

Guidelines for creating defensible trademarks first turned up in a court case involving Abercrombie & Fitch in 1976. Where does your brand lie on this spectrum?

Ranking Category Examples Description
1 Fanciful / Coined PEZ (for candy) PEZ wasn’t even a word when it was first thought up as a brand name. Great brand name.
2 Arbitrary JOLLY RANCHER (for candy) The term JOLLY RANCHER is arbitrary as far as candy is concerned. Good brand name.
3 Suggestive SOUR PUNCH (for candy) The term SOUR PUNCH is suggestive of a sudden sour tasting product. Not always defensible, but strikes a balance between unique and marketable.
4 Descriptive SOUR (for candy) The term SOUR by itself is descriptive of candy, and would not normally be trademark-able for candy. Avoid.
5 Generic CANDY (for candy) The term CANDY when used as a brand name for candy is a generic term, and would not normally be trademark-able for candy. It might be an arbitrary name for something else though, like a computer. Avoid.
Takeaway:

While naming a brand, the needs of marketers and lawyers should be balanced. Picking a wholly-made-up or fanciful name is the best tactic, but will need you to invest effort into marketing. If you want to play close to the line, a suggestive name that does not involve words commonly used in your industry is a great balance between the demands of the Marketing and Legal departments.

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