Many people have heard the warnings about not falling in love at first sight. While those warnings are certainly applicable in matters of affection, they are just as, if not more, relevant when assisting a client with the selection of a trademark.
The trademark a client chooses will serve as its brand identifier; the symbol, word or slogan that represents the company or its product. Once chosen, it can be difficult (and expensive) to change midstream. Once a client selects a mark, there is a risk of their falling in love with it – unconditionally – making it difficult for them to recognize obstacles along the way. The best option in such cases is to try out a mark before making any final decisions (or, in relationship-speak, date). Select a few possible trademarks that the client can envision a future with and then test the waters before undertaking any major commitment.
The following are five things to keep in mind when helping a client select a mark.
1. Resist the temptation to select a mark that describes what the client’s product or service does; it may not be protectable
There is an age-old struggle between the creative team (i.e., brand developers and marketing professionals) and trademark attorneys tasked with obtaining legal protection for a client’s trademarks. The former are tasked with a very specific job, namely, developing and promoting a product or service to the public. To do that, some will argue that a trademark needs to be able to tell a consumer or potential consumer about what the actual product or service does. That approach seems like a good idea at first, as the creative team wants a trademark that clearly and effectively communicates to its target demographic what the product/service is/does. In fact, however, such a trademark will afford very little legal protection to its owner.
The legal protectability of a mark falls along a continuum from weak to strong. The weakest are descriptive marks and generic words. Descriptive marks communicate some aspect of the product or service or its target customers, and may not be protected absent proof that the mark has acquired a source-identifying meaning beyond the descriptive meaning. Generic words are the common names of things and may not be protected at all. At the other end of the continuum, the strongest, most readily protected trademarks are those that are inherently distinctive (i.e., that are readily recognized as identifying a source). Inherently distinctive marks include coined, arbitrary and suggestive marks that do not tell anything about the product or service they identify.
So while the creative team may advocate for a mark that is weaker on the continuum, a trademark attorney will advocate for a stronger, more distinctive mark, as it will give a broader scope of protection and be more easily enforceable than a weaker mark. At the end of the day, both creative and legal need to work together as the client’s relationship with its trademark will be more rewarding if the creative team presents legal (or vice-versa) with strong potential brands to work with.
2. Always retain a trademark attorney to conduct trademark searches before presenting them to a client
Once some strong potential brands have been considered, a brand developer should retain a trademark attorney to vet the marks to ensure they do not encroach on another’s rights. Going with a mark that arguably infringes someone else’s mark could result in the client being forced to cease use of its mark and/or having to pay damages to the aggrieved party.
A trademark search conducted or reviewed by an untrained brand developer is not sufficient. Trademark clearance of a proposed mark requires conducting a wide-ranging investigation to identify the existence of identical or similar trademarks and analyzing their commercial use, particularly in relation to your business activities, both present and potential. An art as much as a science, trademark clearance should be conducted by an experienced trademark attorney with intimate knowledge of the ins and outs of trademark prosecution – from filing an application with the US Patent and Trademark Office (PTO) to global enforcement and defense – and a firm grasp of market realities.
The USPTO considers several factors in evaluating “likelihood of confusion,” including, but not limited to, similarity of the marks, products or services; target markets; channels of trade; sophistication of consumers; and number of co-existing third-party marks. However, whether the USPTO regards a client’s trademark as confusingly similar to another is only half the battle.
Even if the USPTO finds that a client’s mark would not cause consumer confusion, other dangers loom. An existing trademark owner may take a different view from the USPTO, believing that the client’s mark is confusingly similar to its own. Does this party have an aggressive policing practice? Does it frequently file notices of opposition, or routinely file extensions of time to oppose? Is it litigious? Does it have a family of marks with a common root to the client’s mark? These are all factors to consider when assigning a level of risk to a mark and, if the decision is made to go forward with it, developing ways to mitigate that risk.
If a brand developer clears a trademark for a client and the trademark encounters unanticipated hurdles; or, worse, if a trademark attorney gets involved only on the eve of filing and renders a different opinion, the client likely will not be happy, or very forgiving.
3. Determine whether the mark has any negative connotation in any countries where the product or service will be offered
During the course of searching, the search report may disclose information that leads the trademark attorney to believe that the mark may have a negative connotation in a particular country caused by linguistic or cultural differences. This is important to consider at this early stage because if any mark has a negative connotation once translated or due to some other intercultural complexity, it should be eliminated from the list of prospective marks, particularly for products and services that will be offered in other regions.
In an increasingly global economy, linguistic and cultural references play an integral role in brand selection. If a mark is strong but connotes something controversial or upsetting to a subset of the client’s market, it is better to come to this realization as quickly as possible so that the mark can be struck from the list of prospective brand names before it is presented to the client.
4. Consider domain name availability to avoid cybersquatting issues
Once a trademark has been selected and vetted by an experienced trademark attorney, the next step is to consider domain availability so that the client can secure a domain name incorporating the prospective marks before starting the trademark filing process. If a client waits to secure a domain name until after it files a trademark application for the selected mark, the client runs the risk that a cybersquatter watching the USPTO filings may register the client’s desired domain and hold it for ransom.
While there are ways to contend with the cybersquatter, such as by filing a UDRP proceeding, it will be easier and less expensive for the client to secure their domain names at the outset before filing a trademark application.
5. Narrow down the marks and file a US federal trademark application – and foreign filings as appropriate
Once a client has selected some potential marks, it is important to ensure that the client understands the respective levels of risk associated with each of the vetted marks so that it can make an informed business decision regarding which mark(s) to pursue. After the client has selected a trademark, the trademark attorney should file a federal trademark application for the mark with the USPTO.
If a client is interested in pursuing registration outside of the US, a search of the relevant country databases should be conducted and foreign counsel should be retained to analyze the results of the search. The US trademark attorney and the foreign counsel should work in tandem to make the necessary worldwide filings and secure registration in the most seamless and cost-effective manner possible.
Prepare for repeat business from grateful clients
Taking the steps described above can assist clients in avoiding the disappointment of falling in love with a single mark before it has been fully vetted. It also ensures that any investment in a trademark is both cautious and sound, avoiding the more expensive option of changing marks later. In return, the client will entrust you with its next venture, where you can, again, come up with the next big brand.