Make your intellectual property both unique and protectable

Our economy is both global and digital, which means competition from emerging and established brands is fierce. Brands contend to be seen, to be compelling, to be unique, and to be remembered. Success and failure at any of these can be the difference between prospering or withering into obscurity.

This is why companies put so much time and money towards building a brand—especially now that COVID-19 has significantly changed how and where consumers shop. A key component of survival in our digital world is a strong trademark that commands consumer attention. Without a powerful brand, your company will wither into obscurity. But with a strong trademark, your business can thrive in customer engagement and market value.

Whether your trademark is a color, a logo, a word, or a tagline, it’s an entity that provides a tangible connection to the source and quality of your product or service. Trademarks are powerful communication tools. If done well, your mark can become a driving force in the consumer’s experience with your brand—which is the soul of your business.

Be Distinctive, Not Descriptive

Choosing a strong trademark requires some imagination. When launching a new brand, many are tempted to go the easy route by choosing a descriptive term to serve as their trademark. While a descriptive term will allow consumers to immediately understand the type of product you’re offering, it will do nothing to elevate your brand to the next level. The goal is to select a trademark that is unique and distinctive.

Not all trademarks are created equal—in fact, they operate on a spectrum of distinctiveness.

Some terms are never protectable trademarks because they constitute the generic or common terms for a products or service. For example, WALLPAPER is generic and unprotectable as the common name for decorative wall coverings.

Next on the spectrum are descriptive marks, which describe a quality, characteristic, function, or purpose of the underlying product. KETO is a descriptive mark when used in connection with ketogenic energy bars. Similarly, SLIM is a descriptive mark in connection with fitness classes.

Descriptive marks are difficult to protect and enforce. Indeed, the U.S. Patent & Trademark Office (USPTO) will refuse to register a descriptive mark unless the applicant can show that the term has acquired distinctiveness—or in other words, that consumers associate the mark uniquely as a source identifier for your product instead of a mere descriptive adjective.

Proving acquired distinctiveness can be extremely time-consuming and expensive. The USPTO typically requires a company to prove that it has been using a descriptive mark substantially, exclusively, and continuously for five years before it will even consider granting a registration for a descriptive mark. Even then, the USPTO will often require that the applicant submit substantial evidence of sales, advertising, and consumer declarations to prove that the descriptive term has acquired the requisite distinctiveness to warrant trademark protection. Accordingly, unless you have a limitless legal and marketing budget, you should steer clear of descriptive marks.

We recommend clients aim for the middle of the spectrum—the sweet spot!—and choose a suggestive mark. Suggestive marks hint at, rather than describe, the characteristics of the product. Some level of imagination is required for the consumer to create the connection between a suggestive mark and the product or service. These marks are distinctive and strong marks that will sail through to registration with the USPTO—and they’re easier to enforce than descriptive marks. An example of a suggestive mark is SNUGGLE for fabric softener or FACEBOOK for a social media network.

In fact, our firm’s trademark, VIVID IP, is suggestive. All of the intellectual property our firm protects starts with a vivid idea or imagination. Suggestive marks are ideal because they serve as strong trademarks from a legal perspective, but they also create a strong marketing advantage by providing the consumer with an immediate connection between the brand and the product.

The far end of the distinctiveness spectrum contains the strongest, most unique kinds of trademarks. Arbitrary marks are terms that have a meaning that has nothing to do with the associated product. Some examples include APPLE computers and CAMEL cigarettes. The most distinctive type of trademark is a fanciful mark, which is a coined term. Well-known fanciful marks include EXXON and KODAK.

While arbitrary and fanciful marks are the most secure options for trademarks, they are challenging to market, as they convey absolutely nothing about the underlying product or service. Without a small fortune to devote to advertising, an arbitrary or fanciful mark may fail to catch the wandering eye of impatient consumers.

We all know what they say about making first impressions, right? When you launch your new brand, you’ll want to choose your name wisely and represent your products and services with something that’s easy to register, enforce, and market. When in doubt, think about the sweet spot in trademark creation: the suggestive mark.

The Vivid IP team is happy to offer our collective trademark expertise, including how to select a suggestive mark to take your brand to the next level. Get in touch with us below!