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.