Thursday, October 8, 2009

Avoiding A Brand Name Trap

In a recent decision, the Trademark Trial and Appeal Board (the “Board”), the administrative court for the United States Trademark Office, upheld the trademark examiner’s refusal to register the trademark SCENT STRIPES for various bag products, including garbage bags, general purpose plastic bags, paper gift bags, bags for disposable diapers and sandwich bags. The trademark examining attorney refused registration of the mark on the ground it merely describes a characteristic, feature and/or function of the products.

The examiner concluded that the mark SCENT STRIPES for items such as garbage bags, gift bags and diaper bags is descriptive because those products feature a scented stripe. The examiner also pointed to Internet evidence showing that the term “scented stripe” is used in connection with fragrances.

Based upon the record, the Board held that the average consumer of applicant’s products would immediately understand that the products feature scented stripes to eliminate odors. Accordingly, the Board upheld the refusal to registration.

When selecting a brand name, it is important to remember that a term or terms that immediately convey a certain feature, characteristic, purpose, ingredient or use of the products or services are considered to be descriptive; thus not legally protectable upon first use. It is also important to remember that a term only needs to describe one aspect of the product or service for that term to be descriptive – thus uprotectable as a mark. Also, the determination of whether a mark is descriptive is not determined in the abstract, but rather in relation to the products themselves. Meaning would someone who knows what the products are immediately understand the descriptive meaning of the mark?

Why Selection of Descriptive Trademarks is Not Recommended

Although marketers love descriptive marks because they can “sell” products with little advertising budget, they fail to appreciate that they are not immediately protectable as trademarks. Meaning that competitors can also use that "trademark" without trademark infringement. The reason there’s no trademark infringement is because consumers generally don't perceive descriptive marks as source identifiers (or trademarks) but rather as descriptors.

Some descriptive terms can, however, become protectable trademarks through extensive use. Think of Best Buy, News Week and The Wall Street Journal. Those are all descriptive marks, yet they have become strong brand names. Turning a descriptive term into a protectable trademark can take many years and a big advertising budget! And some descriptive marks may never reach trademark status. Think about that for a minute. A company can use a descriptive term as its "mark" for many years to later discover that it has no trademark rights at all and even worse its competitors can freely use its mark! And even if descriptive marks do acquire trademark rights (i.e., McDonalds and TV Guide) those rights are limited. For example, competitors can still use trademarks consisting of descriptive terms in a descriptive sense. Take for example the case of Whirlpool’s “Whisper Quiet” trademark for dishwashers. Although Whirlpool can stop competitors from using the term Whisper Quiet as a trademark, it likely can't stop competitors from advertising that their own dishwashers are "whisper quiet” too.

The better approach to selecting brand names is to select names that are at least suggestive of the products or services.  For example, Grey Hound for bus transportation services, Die Hard for batteries and Close Up for toothpaste. Other factors to consider when selecting a valuable brand name include whether the name is distinctive, meaning the mark is immediately protectable as a trademark, distinguishable from competitors’ marks, able to drive the positioning strategy and able to convey the attributes consumers want.  It's also a good idea to select marks that are memorable, short and simple to understand, likeable and don't have translation issues.

There is no perfect science to selecting the "right" brand name.  However, just be sure to consider how consumers perceive your product rather than how the company perceives the product, which can be the difference between a successful brand and a failure.

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