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Will a Poorly-Chosen Trademark Land You in Court?

Lucere Legal helps small business owners with trademarks
Categories: Trademarks

Peek down any aisle of the average big-box store and you will likely see a vast array of words and symbols trying to catch your eye. Each product attempts to set itself apart from its competitors and to be clearly recognizable at even the most casual glance. These aspects make up the trademark of these goods (or service mark for services)–and are an important part of making each product unique.

Trademarks can create far more contention than you might initially think. Companies are often zealous defenders of what they see as their brand identity, because in it lies one of their most vital intangible assets: consumer goodwill. If a competitor attempts to ride these coattails by deceiving the consumer into mistaking their product for yours, it is important to spring into action.

By and large, trademarks take the form of a word or series of words that are of one of the following five categories:

  • Coined. Often making up the strongest of trademarks, a coined word or phrase is one crafted specifically for identifying a single service or product–among these are Exxon, Verizon, and Kodak. Take care, however. The belated discovery that your fanciful trademark has an alternate, unendearing meaning in another language has left even major corporations with egg on their face.
  • Arbitrary. If you have an Apple device in your pocket, you’re already well familiar with this category. There is no natural connection between the word and the product, only the name-recognition that has been built around it.
  • Suggestive. Weaker than arbitrary marks, a suggestive trademark is one that uses a word or words to convey a feature or benefit of the product or service. Coppertone sunscreen or Snuggle fabric softener are prime examples.
  • Descriptive. A step beyond mere suggestion of the product’s benefits, a descriptive mark outright incorporates a major feature or characteristic of the product or service into its name. Such marks typically have trouble obtaining legal protection, at least until it has come to have a second meaning or recognition through usage.Additionally, trademarks like Coco Chanel or McDonald’s that use the the names of the founder(s) are most often considered to be descriptive marks. Again, until they acquire a particular definition in the marketplace, legal protection is marginal.
  • Generic. It should come as no surprise that the most bland, broad descriptive words are not trademarkable. And who wants to buy a “Car” brand car or a “Garbage” brand trashcan, anyway? However, though the name you give your brand may be coined, it may fall victim to its own success. When a brand becomes so commonly used to refer to the product or service–think Kleenex or Google–it risks becoming generic. Without some extra attention, the brand’s trademark may be lost.

It should go without saying, but there’s more to consider than just finding a name that fits into one of the stronger categories above: primarily, whether the trademark is available for your use. In choosing a trademark that is already registered, or bears a significant similarity to one, you open yourself to charges of trademark infringement.

Your business ideas are important property worth protecting. If you are interested in learning more about intellectual property protection strategies, call us today at 612-206-3701 or reach out via our contact form to schedule a small business consultation session.

Image Courtesy of Stuart Miles | FreeDigitalPhotos.net

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