Failure to Create a Strong Trademark

What does this mean?

If you create a strong mark, it allows you to be eligible for protection and gives the customer a way to identify your product.

Eligible for protection. If your mark isn’t strong, it might not be entitled to protections by the USPTO or by courts. What does that mean? If it’s not eligible for protection, anyone can use it. So if you build up a lot of goodwill with a company named Salesly and your mark isn’t strong enough to be eligible for protection, then a competitor can use the same name and effectively advertise itself as your company to confuse the customer.

Identify your product. Additionally, you want a strong trademark so the customer can identify your product. If you’re selling soft pillows and your company’s name is “Soft Pillow,” the customer might get your product confused with other brands that are a lot cheaper and you won’t be able to build up goodwill.

Does this apply to me?

Probably. It does if you’re trying to establish a brand and generate goodwill. If you have 2 total customers and aren’t trying to expand, and the customers know you well, then scenarios like that make this not as applicable.

Why is this mistake going to harm my business?

Without a strong mark, you can’t establish a brand or goodwill. For example, if your business’s name is “Sales Team” - and you’re literally that (a sales team), first, a competitor can call themselves that same name and “get in” on the goodwill you’ve created. If a bunch of hype about “Sales Team” spreads across the country and someone in California creates a business with the same name, they could potentially profit off the hype you created.

Not only that, what if the “Sales Team” in California does terrible work? And people find out their management sexually harasses their employees? Word spreads and now your entire brand is damaged. But, what if you had a more distinctive name like “Salesly?” You could then trademark that name and prevent other companies from causing you those same problems.

You could avoid all this by doing the following:

How to Make a Strong Trademark: Make it Distinctive

When it comes to distinctiveness in creating a trademark, try to imagine how common the mark is by thinking about how many people would have thought of the same thing. The more you think others would come up with the same mark, the less distinctive it is and vice versa.

There are three kinds of distinctive trademarks:

  1. Fanciful - Easiest way to think of this is -- “fanciful” = making up a word. Google, Kodak, and Kleenex are all examples here. They’re common now, but when they first came out, they were all words that were made up. This is the most distinctive mark and if you can do this, do it.
  2. Arbitrary - Arbitrary means taking a word and attaching it in an arbitrary way to your brand. The most popular example for this is Apple. “Apple” is a generic word; it’s a common noun that would normally be ineligible for registration for failing to pass the distinctiveness threshold. However, the “arbitrariness” or randomness of using it to describe electronic products makes it distinctive. The word “apple” has nothing to do with the products it is used to identify, making it unique and distinctive enough that you might as well have invented a word as a TM.
  3. Suggestive - Suggestive marks use common words (versus made-up names in fanciful marks) but use them creatively so that they tell you about the product without simply describing it. There is some sort of imaginative “leap” to “get” what the mark is saying. So, while the words used are common or even descriptive words, the mark is unique and remains distinctive because of the creative play on those words. Legal GPS would fall under this category. A GPS is a satellite-based navigation system, and our product doesn’t offer that. But it’s suggestive of a legal product that helps you navigate the law.

Make sure you mark falls under one of those categories. Otherwise, you might be dealing with a non-distinctive mark.

What happens if my mark isn’t fanciful, suggestive, or arbitrary?

Descriptive marks are recognized as TM only after they have acquired “secondary meaning” in the sense that when people see the mark they think of you or your product vs. what the descriptive word stands for. But, I don’t think this is a risk you should take – it’s like starting with a handicap. You will not only have to establish secondary meaning but also prove that fact in court. The same is true when your mark tends to simply give info on the product, such as its ingredients or benefits. The only information your mark must convey is the fact that the product on which it is attached is coming from you.

You can download our cheat sheet on making strong trademarks for two more things you can do to make a stronger trademark.

How to make specific kinds of marks strong

Logos

When it comes to logos, make it up! Original marks are often the strongest ones because they are the most distinctive. That said, avoid using universal symbols or those elements that are commonly used as ornamentation. The goal is to identify your product particularly, not to show that it belongs to a particular class of goods or services.

Use our logo as an example--the running document (we call it Navi). If we had used something like the scales of justice or a judge’s gavel, we’d have a really hard time saying it was distinctive because there are about 10,000 law firm or legal product logos that contain one of those two designs. But find a logo that has an anthropomorphic document running--there aren’t any other legal sites that have that.

Trade Names

Your trade name is the name you identify your business as to the public. It has to identify all your goods in trade. Let’s use a couple examples. (1) Nike and (2) Lauren Abetz Crocheting.

Nike: Nike is a tradename. Nike has a shoe called Air Presto. Let’s assume the Air Presto is trademarked. The term “Air Presto” describes that specific shoe. And the term “Nike” describes the company making the shoe (and of course, Nike is trademarked). Nike’s tradename applies to all of its products--no one sees “Air Presto” being sold and not associated with Nike. In other words, this is an example where a tradename applies to all of the company’s products.

Lauren Abetz Crocheting: Let’s say that Lauren Abetz Crocheting is a company that sells different types of crochet hooks. One of the hooks is called “The Jude.” Everyone who crochets knows about The Jude crochet hook, but people don’t really associate it with Lauren Abetz Crotcheting. And the owner of the company, Lauren Abetz, never puts her tradename on the product she’s selling. As a result, the Lauren Abetz Crocheting tradename isn’t identifying her goods in trade so likely would not be trademarkable. Lauren might put the tradename on her letterhead or t-shirts, but that’s not the goods in trade--the crochet hooks are.

Slogans

Lastly, how do you make slogans into stronger trademarks? It’s really the same analysis as other marks -- they need to be distinctive. Here’s an easy example: Nike’s slogan is “Just do it.” What does that have to do with athletic wear and shoes? Not much--it’s distinctive. Nike could’ve used “The Top Athletic Gear,” but that’s unlikely to get trademark protection.

Here another example: think about Johnny Walker’s “keep walking” slogan. It’s so random in relation to the product, but it ties into Johnny Walker.

So let’s go over the recap.

Recap:

  1. You want a strong trademark (a) so you can protect your brand and (b) so you can distinguish your brand from others.
  2. Make sure your trademark is distinctive. Be original, random and arbitrary, whether it’s a logo, trade name, product name, or slogan.
  3. Refrain from including descriptive, informative, functional, common or popular elements in your trademark as it lessens the distinctiveness.

Example

Will created a company called “Sales Team Packages,” which sold exactly that--Sales Packages for companies’ sales teams. Will’s company started to develop a reputation for selling the best Sales Team Packages, and a competitor and Will’s top Frenemy, Chet, picked up on what Will was doing.

Chet changed his company’s name to Sales Team Packages as well. Will was furious and sued Chet for trademark infringement. Will would lose that lawsuit because Sales Team Packages is too descriptive of the business’s name. People couldn’t name their company something so generic or else the world would run out of common business names. Will could’ve avoided this by having a more arbitrary or uncommon name such as “Salesly.”

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