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The Distinguished Mark: Stronger in Court

by | Mar 10, 2014 | Trademark topics, Startup subjects, IP points | 0 comments

When choosing brand names, because all marks are not created equal, my advice is almost always to choose a strong mark. But there are pros and cons.

Legally, a strong mark is more protectable. When considering whether there is an actionable infringement, we consider the marks’ similarity, whether the products are related, channels of trade, sophistication of the relevant consumer, whether there has been any actual consumer confusion, and, yes, the strength of the allegedly infringed mark. In trademark parlance, the strength of the mark is related to distinctiveness.

A mark can be inherently distinctive or it may become distinctive through extensive and continuous use in the market. Inherently Distinctive: There are three types of inherently distinctive marks:

1. Fanciful marks are not actual words, but made-up terms, like ACCENTURE for consulting, EXXON for energy products, GOOGLE for Internet services, STARBUCKS for coffee, REDDIT for social news, PINTEREST for social networking, EXPENSIFY for online expense reports.

2. Arbitrary marks are real words, but words that have no literal or suggestive meaning connected to the product. Examples include LEAPFROG for educational games, APPLE for computer products, AXE for men’s toiletries, DROPBOX for document management software, JACK IN THE BOX for fast food, and DAWN for cleaning products.

3. Suggestive.marks evoke and indirectly, extrinsically relate to the product. Examples of suggestive marks are AMAZON for online retail services, CHICKEN OF THE SEA for tuna, DREAM HOTEL for hotels, PEDIGREE for pet food, PRUDENTIAL for insurance services, GREEN BRANCH for banking services, and COPPERTONE for sunblock.

Acquired Distinctiveness: A merely descriptive mark communicates something immediate about a feature or attribute of a product. These marks can be either unregistrable or more costly to register, and difficult to protect. Examples are LITTLE TAVERN for a restaurant, WORLD BOOK for encyclopedias, GRAND PRIX SPORTS for rugby and soccer tournaments, CURVEE, CURVEY, or CURVEEY for clothing, E-WEAR for Audio Devices, or MULTIACCOUNT for a debit card.

Legally, merely descriptive and geographically descriptive marks are weak. Consumers find such marks fail to communicate uniqueness or stand out in the market. For example, when considering a vendor to print my business cards, the following brand names tell me that the vendor is a printer: Let Us Copy, Print & Design, Big City Design & Print, and City Copy & Print Center. But they all tend to get jumbled in my mind. Other printers that stand out more (at least to me) are Dragon Printing, Oscar Printing, LightSource, MINUTEMAN Printing.

Here’s the true test: does your name stick to the mind? Is it a great hook for the package of benefits you offer? The good news here is that your marketing sense that more distinctive is better aligns well with the legal considerations. So go ahead, distinguish your mark and thrive.

– M..L. Shapiro


A strong mark is inherently more protectable

A strong mark is inherently more protectable, though that requires more advertising to associate the name with the product

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