Common Trademark and Service Mark Pitfalls (Part 1): Mark Selection

Many entrepreneurs (and even a few lawyers) approach the adoption and registration of trademarks and service marks (collectively, “marks”) with the wrong mindset, failing to devote due consideration, time, and investment to the process.  Issues can arise throughout the selection, registration, protection, and exploitation of marks.  In the first installment of this multi-part series, I discuss some common problems that can arise during the mark selection stage.  In future installments, I will examine some additional issues that tend to crop up in the latter stages.

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"What is a mark, anyway?"

Most business owners understand the importance of carefully selecting and developing their marks.  However, some of the most brilliant entrepreneurs still consider the investment of time and money in effective mark development to be a low priority.  Too often, marks are considered nothing more than the name for certain products or services -- the functional equivalent of an identification number.   Ideally, a mark should reflect the essence of the associated product or service, create a direct and positive impression in the minds of relevant consumers, and provide protection against confusingly similar marks that might divert consumers to competitors.

Marks serve several fundamental purposes, including the following:

1. Identifying and distinguishing particular goods or services.
2. Reinforcing the standard of quality and other positive attributes the consuming public associates with the goods or services.
   
3. Symbolizing goodwill that an owner builds over time through the good or service offering.  One need only consider products such as Coca-Cola® and Pepsi® and the underlying intangible qualities that cause a person favor over the other to understand the power and value of goodwill.
   

Mark Distinctiveness

One mistake businesses frequently make when choosing a mark is failing to recognize that the selection process is not purely a marketing issue, but a combination of marketing and legal considerations.  When developing a “short list” of potential marks, most businesses instinctively try to create a distinctive mark, whether or not it's an expressly stated objective.  Essentially, a mark's distinctiveness is how well it distinguishes one’s goods or services from those available from alternative sources or competitors.

When assessing potential marks, businesses sometimes fail to consider the overall strength (and protectability), focusing solely on the mark’s “catchiness,” or general memorability.  A mark might be very catchy, but not very protectable, if at all.  The more distinctive, the stronger the mark.  A mark may be considered Generic - the common name of, or descriptor for, the good or service itself (e.g., APPLE for apples, as opposed to the same mark for computers and electronic devices); Descriptive - one that directly and immediately conveys some knowledge of the characteristics of the goods or service (e.g., PENCILS AND PAPER for a retail stationery store); Suggestive - marks suggesting some quality or ingredient of the goods or services, as opposed to actually describing the goods or services, as with descriptive marks (e.g., COPPERTONE® for sun tan oil); Arbitrary - commonly used words and/or graphic elements being used to identify goods or services for which the mark does not naturally suggest or describe an ingredient, quality, or characteristic (e.g., APPLE® for computers); or Fanciful - original, “coined” words or elements that are developed for the sole purpose of functioning as a mark (e.g., EXXON® for petroleum products).

Generic marks can never become protectable, registrable marks (at least at the federal level); however, descriptive terms can be protected if they first acquire secondary meaning in the minds of consumers (i.e., the mark causes one to think of the mark owner's specific goods or services, rather than those of competitors).  Suggestive, arbitrary, and fanciful marks are inherently distinctive and need not acquire secondary meaning to be registered with the U.S. Patent and Trademark Office (the “USPTO”).  Some brand consultants gravitate toward marks in the upper suggestive/lower arbitrary range, which can effectively combine the catchiness that their clients desire, with the increased protection that more distinctive marks provide.

Mark Clearance and Other Considerations

Another common and potentially costly -- sometimes financially devastating -- mark selection issue is the failure to properly clear a mark before its adoption and use in commerce.  More than one company has spent significant time and money developing a great product or service, taken the goods or services to market under an uncleared mark, and only then discovered (typically after receiving a not-so-friendly "cease and desist letter") that the mark is confusingly similar to another mark.  Although it is sometimes still possible to use the mark, at least to some extent, the late discovery of other, competing marks almost always creates unnecessary additional expense, delay, and aggravation.

Finally, U.S. trademark law precludes certain types of marks from federal registration, including marks consisting of immoral or deceptive matter; marks that resemble previously registered marks, such that registration would create a likelihood of confusion; marks that are simply functional (e.g., merely decorative adornments on clothing that do not serve to identify the source); and marks that are geographically descriptive.  Although these issues typically arise during the application stage, which I will cover in a later article, they are critical considerations during selection and clearance.

Please be sure to read the next article in this series, in which I'll discuss the mark clearance process in more detail.