Category: Trademark Registration

Four Reasons Companies Should Care About Their Trademarks

1. Consumers Use Trademarks to Find Products

Properly selected trademarks distinguish companies’ products from those of their competitors. If trademarks don’t adequately distinguish the associated widgets from the competition, their owners will inevitably lose sales. Those trademarks would also be worthless company assets. Companies should carefully select trademarks that will effectively communicate a product’s source, cut through marketing “clutter” and capture consumers’ attention.

2. Trademarks are used to Identify Quality

Consumers use trademarks to identify the quality of products. Once consumers become familiar – and satisfied – with a particular product’s quality and price, consumers will continue to seek out that product time and time again. If a product’s quality is inconsistent, however, consumers will inevitably abandon that product in favor of another. Companies that deliver their products or services at inconsistent levels of quality risk severe damage to their brands. Those that offer their products at a consistent level of quality – and at a fair price – can build strong brands.

3. Trademarks are used as Decision-Making Tools

Trademarks reduce time, cost and effort in the decision-making process by allowing consumers to quickly select products based upon past experiences. Trademarks can convey emotional attributes to consumers that help with the decision-making process. A company’s trademark may convey a certain level of quality or image as well as other messages – such as a lifestyle, aspirations and desires.  Trademark owners should consider what attributes consumers desire from their products when selecting new product names.  Then select a name that starts the positioning process and drives the brand.

4. Trademarks Can Be A Company’s Most Valuable Assets

Trademarks may potentially be a company’s most valuable assets. Trademarks have the potential to increase in value over time. Trademarks can be used as collateral to secure business loans, which can be used for business expansion. Trademarks can also be licensed to third parties to designate new product offerings, which can increase revenues. At last count, the Coca-Cola trademark was estimated to have a value of 70 billion dollars – which is more than all of the company’s tangible assets.

There are plenty of reasons why companies should care about their trademarks. Many more than the four listed above. Simply understanding and appreciating the basic value of trademarks and how they can drive a brand are the best reasons of all and a good place to start.

What are some other reasons to care about trademarks/brand names?

Avoiding a Brand Name Trap: What is a Descriptive “Trademark”?

What is a Descriptive “Trademark”?

What is a Descriptive “Trademark”?  The Trademark Trial and Appeal Board (the “Board”), the administrative court for the United States Trademark Office, upheld a trademark examiner’s refusal to register the applied-for 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 applied-for mark on the ground it merely describes a characteristic, feature and/or function of the products.

what are descriptive trademarks
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The examiner concluded that the term 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.

Descriptive Terms (“Marks”) – Analysis Overview

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 need only describe one aspect of the product or service for that term to be descriptive – thus not immediately protectable 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 term as applied to the products/services?

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 do not perceive descriptive terms as source identifiers (or trademarks) but rather as descriptors.

U.S. Patent and Trademark Office Campus

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 terms / 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 terms do acquire trademark rights (i.e., McDonald’s and TV Guide) those rights are limited. For example, competitors can still use trademarks consisting of descriptive terms in a descriptive sense to describe their own products. #NotTheBest

Better Strategy

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. You may also add a descriptive tagline to “drive home” the descriptive features and attributes of the products without jeopardizing brand name strength.

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 brand failure.