Trademarks, like brands, build in strength over time. The test for trademark infringement is “confusing similarity.” Put another way, if the average consumer believes both products to have come from the same source, there is infringement. Obviously, the more a consumer is familiar with a particular brand, the more defendable its mark. That’s why it behooves a company to do the following:
- Choose a distinctive mark, including a “coined” name. As I mentioned in the chapter on brand identity, brand names range from generic and descriptive to suggestive and arbitrary or fanciful (“coined”). Obviously it takes longer to build meaning for coined names, but they are also more distinctive and easiest to protect legally. Kodak, Xerox, and Exxon fall in that category. Suggestive marks are the next most protectable. Examples include Coppertone, Duracell, and Lestoil. Even common words can be used as trademarks as long as they are not used descriptively. These common words/phrases are also suggestive marks: Amazon (big), Twitter (brief and chatty), and Apple (different, offbeat). Descriptive marks are not protectable unless the brand creates a secondary meaning for the word, such as Weight Watchers, Rollerblade, or Wite-out. Generic marks, such as Shredded Wheat and Super Glue, are not protectable at all.
- Avoid geographic names as a part of your mark—they can be the basis of trademark refusal.
- Register the mark.
- Be consistent in the use of the mark.
- Create strong trade dress (as discussed later in this chapter).
- Widely advertise and distribute its trademarked products.
- Do all of this over a long period of time.
Because the strength of a mark is dependent upon consumers’ familiarity with it, it is much easier for a competitor to neutralize your mark soon after it has been introduced than after it has been in use for a long period of time.
Courts use the following tests to determine infringement:
- Strength of the trademark claiming infringement.
- Similarity of the two marks.
- Evidence of consumer confusion.
- Care a consumer takes in comparing products.
- Intent of the organization in using the potentially infringing mark.
- (Some drugstores and grocery stores use generic brands that emulate a leading brand’s package shape, colors, typestyle, formulation, etc., and display the product side-by-side with the leading brand to imply that there are no differences between the two, encouraging consumers to purchase the lower-priced generic item. In this situation, there is clearly intent to emulate the leading brand and reduce the perceived differentiation and value advantage of that brand, but it is not clear that there is intent to deliberately cause confusion as to source.)
- Relatedness of the two businesses.
- Overlap between communication and distribution channels.
By using the mark in association with your products and services over time, you gain trademark protection. Registering your mark (marks can be registered at the state and federal levels) provides additional protection. Although common law and federal trademark statute protect an unregistered mark, registering your mark transfers the burden of proof to the second comer in challenging a mark’s registration. With federal registration, you can sue infringers in federal court. Also, after five years of registration, the mark becomes incontestable. Federal trademark registrations last ten years and can be renewed every ten years ad infinitum.
You can acquire trademark rights in one of two ways. To acquire trademark rights based on use in commerce, you must be the first person or organization that uses the mark in conjunction with the products or services for which trademark protection is sought. To acquire the mark base on intent to use, you must apply to register the mark through the United States Patent and Trademark Office.
Before choosing a trademark, first conduct a simple search to weed out marks that are not available. This search can be done online for free. After that, for the remaining candidates, conduct a full search through a law firm specializing in trademark law or through an experienced trademark search firm.
Strong brands run the danger of becoming category descriptors. Always use trademarks as adjectives, not verbs or nouns. If your brand is in danger of becoming a category descriptor, consider talking about your brand in the following way that differentiates the brand from the category. For example: “Jell-O® gelatin,” “Kleenex® facial tissue,” and “Xerox® photocopier.”
Excerpted from Brand Aid, second edition, available here.
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