Editor’s Note: Hey, it’s Chris here. Suzi Hixon, a member of our editorial board used to work in the world of intellectual property (no joke) and wrote this killer post for the blog. Please enjoy!
Entrepreneurs, including private labelers, often ask me for ideas on how to name their new private label products. Nailing down a viable and strong trademark for a new product in the eary stages of product sourcing and development is ideal, because it’s the optimal time to choose a trademark that is both marketable (from a brand value perspective) and protectable (from a legal perspective.) Unfortunately, these two goals can sometimes collide.
However, utilizing the tips below, private labelers can increase their chances of creating a brand name for private label products that is viable from both a marketing and legal standpoint, early in the private labeling process.
1. Select a trademark that is distinctive
United States trademark law recognizes a “spectrum of distinctiveness,” a sliding scale of protectability, where the more distinct and unique the term, the easier it is for the owner to claim and be granted exclusive trademark rights for that term.
Trademarks fall somewhere along this scale of distinctiveness, ranging from “coined”, which is the strongest, to “generic”, which is worthless:
COINED/FANCIFUL – Invented or “made up” words that would otherwise have no meaning
Value: Very strong and very valuable
Examples: EXXON Oil, KODAK Camera
Note: Easier to protect from the legal side, but might be a bit more difficult from a marketing perspective because private labelers will need to proactively educate consumers about the product, and this costs marketing dollars.
ARBITRARY – Real words, but the words have no connection to the related goods
Value: Strong and valuable
Examples: APPLE Computers, BLACKBERRY Smartphones
Note: Easier to protect from the legal side, but again, private labelers will need to proactively educate consumers about the underlying product.
SUGGESTIVE – Words that allude to the underlying goods, but do not describe them
Value: *Sweet spot*
Examples: GREYHOUND Bus, PUP-PERONI Dog Treats, COPPERTONE Tanning Lotion
Note: Afforded some legal protection, and often fantastic from a marketing perspective.
DESCRIPTIVE – Words that refer to the characteristics or quality of the goods, or an ingredient or aspect of them
Value: Weak and low value
Example: HONEY BAKED HAM COMPANY
Note: These marks are difficult to protect from a legal perspective, but it isn’t necessarily impossible, particularly if the mark gains “secondary meaning” over time.
GENERIC – Words that are the names of the goods
Example: ASPIRIN for aspirin, or APPLES for apples
Note: These are words that have no possibility of ever becoming a trademark. However, some former trademarks that were originally coined marks end up dying a slow, sad death by “genericide” if they aren’t properly used.
Initially, when you are selecting a trademark, you may be tempted to choose a descriptive trademark because there are certainly some marketing benefits to using a trademark that simply describes the product. But don’t be lazy when selecting your trademark. Keep in mind that the most valuable marks reside on the upper end of the scale (i.e., “coined,” “arbitrary,” and “suggestive” marks). Suggestive trademarks are the sweet spot. They often strike the perfect balance because they are usually protectable as trademarks from a legal perspective, while also suggesting characteristics of the goods, which is great from a marketing perspective.
2. Avoid “famous” trademarks
Normally, marks are protected in the area of commerce in which they have been used. For example, it is possible for there to exist numerous registrations for the trademark DELTA (DELTA Airlines and DELTA Faucets coexist). Some marks are so inherently famous, however, that any use of the mark or anything like it is a problem, even if the famous owner has not and never will enter your field. If you use STARBUCKS for selfie sticks or phone covers, for example, don’t be surprised to be on the receiving end of a big fat cease and desist letter from Starbucks so fast it’ll make your head spin!
3. Avoid using surnames
When creating your trademark, it is important to avoid marks which are the full name or a surname of an individual living or who has died in the last 30 or so years. In certain circumstances, it is possible to obtain registration of a surname as a trademark, particularly with permission of the individual. Did you know Taylor Swift owns the mark TAYLOR SWIFT? If you file to register a trademark which appears to be someone’s name, you may be required to swear under oath that no such person exists, that the person is long dead, or to supply a written permission (an affidavit) from the person named. Avoid these. Your name probably isn’t that cool anyway.
4. Avoid geographic names
Avoid names that include a geographic area. Besides being easy to forget, and difficult to protect under trademark law, a geographical name may no longer fit if your business if you expand beyond a particular sales or service area. This tip particularly applies to online sellers, where geographic indicators are basically becoming moot. Really think twice before giving your product any type of geographic identifier. And please, don’t ask me to file a trademark application for you PARISIAN EAU DE TOILET that just got shipped straight from China. I loathe formulating arguments around “Geographically Deceptively Misdescriptive” rejections!
5. Avoid scandalous marks
Believe it or not, the USPTO has been granted the subjective task of deciding what is scandalous or disparaging material. Obsenities and racial or ethnic epithets are often rejected by the USPTO, and, due to this subjective nature, many marks actually get registered which are arguably scandalous or disparaging. These marks will sometimes slip through the application process, which is actually kind of hilarious, particularly due to the fact that what one person may find obscene, another person will find totally awesome. However, these types of marks do not come without risks, even if you managed to get it through the registration process. Avoid them, unless you want to spend a lot of money on attorneys’ fees trying to get it registered. You don’t.
6. Avoid “clever” misspellings of otherwise unusable marks
Many clients ask if they can use fun spellings and iterations of marks that would otherwise not be available. Please keep in mind that this does not avoid the original problem with a mark, that is, that the mark is too similar to another mark already in use. Don’t even ask if you can use DISNEE instead of the famous mark DISNEY! Really, it’s not even that cute, funny or clever. Also, a descriptive word like “speedy” for a fast car is likely not registrable if you write it “SPEE-DEE.” Similarly, if “Tomato” is generic for tomato, then so is “TOMAHTOE.” If you are nervous about asking your trademark attorney about your clever iteration, just…don’t….
7. Conduct a trademark search
After you’ve chosen one or more marks that seem possible, and before settling on a trademark and commencing any marketing efforts or spending any marketing or legal dollars, it is strongly suggested, although not required, to perform trademark searches to determine if a trademark similar to your trademark already exists and is in use.
I’ll go into trademark searching, and the various options and platforms, in a future post. But for now, just understand that you want to choose a mark that isn’t confusingly similar to other trademarks that are already in use. Choosing marks that are confusingly similar to other prior existing marks does a disservice to not only the prior brand owner, but also to the general public.
I hope you find these 7 tips useful when you are going through the brand selection process. But stay tuned. There’s more….
I’ll be posting here about the importance of “clearing” your trademark to help decrease your risk of infringing another entity’s trademark, as well as how private labelers can go about registering their trademark.
And guess what? Did you know that trademark registration will assit you in the Amazon Brand Registry process, as well as help you decrease the chance of the imporation of foreign goods infringing your trademark? More to come!