We should all have a sincere interest in encouraging and assisting startup businesses, particularly those in our local areas. Startup owners are excited, creative, and many times provide useful services, products, and eventually (hopefully) create new jobs. All too often, however, by the time we speak with a startup about Intellectual Property opportunities, they have already picked a product or a business name or brand that is not registrable on the Principal Register as a trademark or servicemark because it is descriptive.
Accept This as Fact … ;-)
For purposes of this blog post, take my word for it that the benefits of federal trademark registration are considerable. Ok, if you do not want to take my word for it, read here, here and here. Now that you are convinced beyond-any-reasonable-doubt that trademark registration (federal or state) is worthy of consideration for your startup or existing business, let’s look at the the four most likely landing spots (excluding generic) on the Trademark Spectrum of 5 categories for the name or brand you may be considering.
The “Trademark Spectrum”
Below are the five categories of trademarks as identified by the U.S. Patent and Trademark Office (“PTO”):
- Generic – e.g., Kleenex, Coke, BUNDT for cakes, but maybe not yet for Google or XEROX in U.S., or XEROX (overseas). Here is a list of 41 alleged generic terms to help you better understand this category. There is likely legitimate disagreement as to whether or not all 41 of these are generic. Also, as noted above, it is unlikely that a new mark will be generic.
- Descriptive – e.g., Columbia Automotive, West Richmond Plumbing, or even Kiawah Island – Some “descriptive” marks can go on the “Supplemental Register,” and await transfer to the “Principal Register,” after 5 years. One way to register a descriptive name is to seek a more limited registration in a stylized / design mark, as was done by Kiawah Island with its scripted font registration, or to seek registration of a descriptive name as part of a logo, as could be done for this mark.
- Suggestive – this is generally considered to be the best type of trademark to select – e.g., SPEEDI BAKE for “frozen dough,” or NOBURST for “antifreeze,” or see here for a discussion about suggestive marks.
- Fanciful – e.g., XEROX or PEPSI before they became synonymous with the products they identified and, arguably, started becoming “generic” via genericide.
- Arbitrary – e.g., XYZ Plumbing. The PTO defines an arbitrary mark as “a known word used in an unexpected or uncommon way.”
Much of the above comes straight from the horse’s mouth, i.e., The PTO’s “Distinctiveness/Descriptiveness Continuum,” Section 1209.01 of the the Trademark Manual of Examining Procedure (“TMEP”). This is the Manual that the Examiners use at the PTO in evaluating federal trademark applications.
Click here for another blogger’s perspective on the five trademark categories.
Goods and Services
The goods and services associated with the mark are what make a mark descriptive. For example, Bass is not descriptive for an English Ale, e.g.,
but it could be for a fishing related product, such as a BIG MOUTH BILLY BASS. On a historical note, The Trademark Blog reports that the Bass mark for English Ale has been in use since the 1600’s and was the first ever registered mark in England. The triangle-and-script logo above is an example of a stylized / design mark, actually a composite of sorts since it also includes the word mark, BASS, referred to as the Literal Element on the PTO application.
So What Should You Do (or not do) in Deciding Upon a Name
This list below of four suggestions is by no means exhaustive, but should be good to get you started:
ONE: At a minimum, do a search for the name you are considering. Use Google, Bing or Yahoo, or all three. Also search the TESS database at the PTO.
Don’t pick a name without doing some form of a search, the more comprehensive, the better. You may regret not searching and it may be very costly, even fatal to your startup or business.
TWO: Spend time trying to come up with a catchy / suggestive name if you can. Talk to friends, see what similar businesses have done. Also seriously consider engaging an advertising or marketing firm to help you in selecting a name and / or logo for your business. This logo is something you should hope to use for the life of your business.
When Google introduced its new logo recently, did you (like me) have trouble finding the Google app button on your smartphone because you were still looking for the old blue button with the lower-case “g” on it? The value of consistent use of a logo should not be overlooked.
Don’t select a descriptive name unless it is part of an informed strategy to do so. One arguable benefit of a descriptive name is you are unlikely to be sued for trademark infringement, but that is not guaranteed. Some experts have predicted a possibly bright future for descriptive marks.
THREE: Plan for trademark registration to protect your brand and build value in the future of your business. This can involve many aspects of branding, including company names, product names, product tag lines, sales phrases, stylized logos, composite logos, etc., etc.
Don’t ignore (or continue to ignore) the benefits of trademark or servicemark registration. It is difficult to imagine a company or business that would not benefit in some way by employing an informed trademark portfolio development strategy.
FOUR: Once you think you have educated yourself on these issues, talk to an experienced trademark attorney about your options. If the startup has limited funds, you will want to know which trademark / servicemark filings need to be prioritized and be ready to budget for same in your search for capital. For some business models, the trademark is possibly the most valuable asset from the outset, and should not be overlooked.
Similarly, if you insist or cannot escape your commitment to a descriptive name, getting it on the Supplemental Register sooner is better than later and will start the clock running on the five-year secondary meaning presumption to move the mark to the Principal Register.
Trademark law can be very complex and is usually (almost always) filled with irony. For example, consider an excessively eager party with an unregistered trademark / brand that sends a nasty cease-and-desist to another party only to discover the recipient of the nastygram is the senior user of the mark! Then the supposed senior user learns in discovery that their mark was not used for 2 or 3 years and may now be considered abandoned, making the sender the senior user?
Don’t Overlook Trademark / Servicemark OPPORTUNITIES
Amongst the primary Intellectual Property fields of patents, copyrights, and trade secrets, trademarks are often overlooked as simply the name for a business. Overlooking this opportunity to brand your business or product is often costly in terms of value when it comes time to sell the business, or in lost resources when time must be spent responding to infringement allegations.
Whether your business is a startup or has been around for generations, you want to be able to avoid or overcome problems related to use of a descriptive name. If possible, doing that from the outset is likely best. In any event, don’t let becoming informed about your trademark options be a missed opportunity for your startup.