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How Do I Choose a
Strong Trademark?

© 2013 David Lizerbram & Associates

®


How Do I Choose a Strong Trademark?

When Should I Ask This Question?
•

Any time you’re selecting a name for your business, product, service, or
brand, you’re entering the world of intellectual property.

•

By carefully selecting a trademark, you’re creating an asset that can add
enterprise value to your business for years to come. On the other hand,
selecting a weak trademark can lead to marketing challenges,
unexpected costs, and potential litigation.

•

This presentation will provide some basic guidelines as you go through
the branding process.

•

Always do your due diligence and consult a professional if you run into
any questions or challenges.

© 2013 David Lizerbram & Associates®

2
How Do I Choose a Strong Trademark?

What is a Trademark? (A friendly reminder)
•

A Trademark is anything that identifies and distinguishes the source of
the goods or services of one party from those of others.

•

Most trademarks are comprised of words, images, or a combination of
the two, but anything that can identify the source of goods or services
can be a trademark. This presentation will focus on work marks.

•

The core purpose of trademark law is to allow consumers to have
confidence in the accuracy of labels and other information that tells them
where goods or services come from. This allows the market to build trust
in the consistent quality of brands.

•

For more information, please see my presentation What is a Trademark?

© 2013 David Lizerbram & Associates®

3
How Do I Choose a Strong Trademark?

The Trademark Spectrum
•

Trademarks are thought of as existing on a spectrum from
weakest to strongest.

© 2013 David Lizerbram & Associates®

4
How Do I Choose a Strong Trademark?

On the Spectrum: Generic “Trademarks”
•

A generic term is the common name for a type of good or service. Examples
include “Pizza Shop” or “Delivery Service.”

•

Generic terms cannot be protected as trademarks. Sometimes, it’s not entirely
clear if a term is generic. Avoid choosing a term that might reasonably be
considered generic for your trademark.



Blau Plumbing, Inc. v. S.O.S. Fix-It, Inc., 781 F.2d 604, 609 (7th Cir. 1986) (“To allow
a firm to use as a trademark a generic word . . . would make it difficult for
competitors to market their own brands of the same product.”)



In general, a generic term cannot be appropriated from the public domain and thus
cannot receive trademark protection. Welding Servs., Inc. v. Forman, 509 F.3d
1351; Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976).

© 2013 David Lizerbram & Associates®

5
How Do I Choose a Strong Trademark?

On the Spectrum:
Descriptive Marks and Secondary Meaning
•

A descriptive mark is an existing word (or words) that is used in
connection with the product or service. “Cheesy” might be descriptive
of pizza. “Speedy” or “Reliable” might be descriptive of delivery
services.

•

Descriptive terms are granted little or no protection as trademarks.
The law recognizes that many businesses have to use these words
to describe their goods and services.

•

Descriptive terms can gain greater trademark protection when they
acquire “secondary meaning” through “acquired distinctiveness” –
typically by way of extensive use in the marketplace.

•

Avoid choosing descriptive terms for your trademark unless you are prepared to invest a
lot of money over a long period of time establishing that you are the sole entity using this
mark in commerce on these goods or services.

© 2013 David Lizerbram & Associates®

6
How Do I Choose a Strong Trademark?

On the Spectrum: Suggestive Trademarks
•

A suggestive trademark suggests a quality or feature of the product or service, but
doesn’t come right out and say it.

•

Famous examples include GREYHOUND for bus services, CHICKEN OF THE SEA
for tuna, and PLAYBOY for men’s magazines.

•

As you can see from these examples, a suggestive trademark creates a picture in
your mind or forces you to think (hopefully in a positive fashion) about the product
or service.

•

Suggestive marks are among the strongest types of trademarks. However, there
can be a fine line between suggestive and descriptive, so tread carefully.

© 2013 David Lizerbram & Associates®

7
How Do I Choose a Strong Trademark?

On the Spectrum: Arbitrary and Fanciful Marks
•

The strongest trademarks are arbitrary and/or fanciful.

•

Arbitrary trademarks consist of a word or words
that have nothing to do with the goods or services.
Examples include APPLE for computers or STONE
for beer.

•

Fanciful marks are coined words (neologisms) that have
no meaning other than in connection with the trademark.
Most pharmaceutical names are fanciful marks; other
examples include EXXON and VERIZON.

•

These marks are, by their nature, inherently distinctive. They are, relative
to other types of marks, easy to register and protect. However, they
sometimes present marketing challenges, as they don’t suggest or
describe anything about the product or service.

© 2013 David Lizerbram & Associates®

8
How Do I Choose a Strong Trademark?

Avoiding Trademark Conflicts
•

Trademark infringement claims are based on “likelihood of confusion.” This issue
primarily applies to similar goods and services.

•

Ask yourself this: is it likely that a consumer encountering your POPSI soft drink will
think it’s the same as – or from the same source as – PEPSI? From a trademark
perspective, the answer is “Yes.”

•

Trademark conflicts are evaluated based on sight, sound, and meaning. So your
mark should not look like, sound like, or connote anything confusingly similar to
your competitors’ brands.

•

Very famous trademarks are entitled to a broader form of protection – their owners
are entitled to claim “dilution” even if there is no likelihood of confusion or the
goods or services are dissimilar. Avoid choosing a mark that is reminiscent of a
very famous mark, no matter what line of business you are in.

© 2013 David Lizerbram & Associates®

9
How Do I Choose a Strong Trademark?

Things to Avoid: Geographic Terms
•

In many cases, geographic terms are problematic from a trademark perspective.



Geographic terms that describe the origin or location of the goods or services
usually cannot function as trademarks because all of your competitors also need to
communicate that their beer comes from San Diego or their auto shop is located in
Philadelphia.



Geographically misdescriptive terms cannot act as trademarks. You can’t use
trademark law to deceive customers into thinking your salsa comes from California
if it’s really made in Michigan (no offense to Michigan’s fine salsa makers, of
course.)

•

Arbitrary or suggestive geographic terms, however, can function
as trademarks. An example is ARIZONA for iced tea – the state did
not previously have an association with tea in the minds of
consumers, so the mark is not descriptive or misdescriptive.

© 2013 David Lizerbram & Associates®

10
How Do I Choose a Strong Trademark?

Things to Avoid: “Merely Laudatory” Marks
•

Wording that is merely laudatory (THE BEST this, WORLD’S
GREATEST that) can’t function as trademarks.

•

That type of language describes the goods or services in a
positive light. This is so common across all types of goods
and services that the law regards it as “puffery.”

•

Consumers have been trained to recognize this as common
advertising language, not as a distinct, brand-identifying trademark.

•

The US Patent and Trademark Office (USPTO) has rejected proposed trademarks
including THE BEST BEER IN AMERICA, AMERICA’S FRESHEST ICE CREAM, and
AMERICA’S FAVORITE POPCORN!

© 2013 David Lizerbram & Associates®

11
How Do I Choose a Strong Trademark?

Things to Avoid: Names as Trademarks


The USPTO has four bars to trademark registration on the principal register for
names:



The mark is the name of a living individual.



The mark falsely suggests a connection with “persons, living or dead.”





The mark is “primarily merely a surname” (including in languages other than English.)

The mark criticizes “persons, living or dead” or brings them into contempt or disrepute.

Special Treatment for Authors, Performing Artist Names, or Pseudonyms: 2 Criteria


First, the name must be used on a series of written or recorded works; and



Second, if there is evidence that the name identifies the source of the series does not just
identify the author or artist, it may be registered.



A pseudonym can function as a trademark as well, if it meets the criteria above. The
USPTO does not make a distinction between real names and assumed names.

© 2013 David Lizerbram & Associates®

12
How Do I Choose a Strong Trademark?

Things to Avoid: Immoral or Scandalous Marks
•

Section 2(a) of the Federal Trademark Act (Lanham Act), 15 U.S.C. 1052(a), bars
the USPTO from registering Immoral or Scandalous trademarks.



The USPTO has stated:






To be considered “scandalous,” a mark must be “shocking to the sense of truth, decency or
propriety; disgraceful; offensive; disreputable; . . . giving offense to the conscience or moral
feelings; . . . [or] calling out [for] condemnation,” in the context of the marketplace as applied to
goods and/or services described in the application…Scandalousness is determined from the
standpoint of “not necessarily a majority, but a substantial composite of the general public, . . .
and in the context of contemporary attitudes.”
Evidence that a mark is vulgar is sufficient to establish that it is scandalous or immoral…Dictionary
evidence may be sufficient to show that a term is vulgar if multiple dictionaries, including at least
one standard dictionary, uniformly indicate that the term’s meaning is vulgar, and the applicant’s
use of the term is clearly limited to the vulgar meaning.

Trying to determine what the USPTO will find immoral or scandalous is difficult at best. In
recent years, they have rejected COCAINE (for soft drinks) and KHORAN (for wine). On the
other hand, there are quite a few registered marks using the word “Ass.”

© 2013 David Lizerbram & Associates®

13
How Do I Choose a Strong Trademark?

Summary
•

Stay on the right side of the trademark spectrum.
•
•

Descriptive marks are weak at best.

•
•

Generic terms can’t be trademarks.
Suggestive, Fanciful, and Arbitrary marks are the strongest.

Certain things should be avoided in most cases:
•
•

Merely Laudatory marks

•

Names as trademarks

•
•

Geographic terms

Immoral and Scandalous marks

Following these guidelines will help you establish a strong, lasting brand.

© 2013 David Lizerbram & Associates®

14
How Do I Choose a Strong Trademark?

Prepared and Presented by:

David Lizerbram, Esq.
David Lizerbram & Associates®
David@LizerbramLaw.com
www.LizerbramLaw.com
Twitter: @LizerbramLaw
Direct Phone: (619) 517-2272
4080 Centre Street, Suite 205
San Diego, California 92103
Slideshare.net/DavidLizerbram
© 2013 David Lizerbram & Associates®

15
How Do I Choose a Strong Trademark?

FINAL NOTE: THIS PRESNTATION IS NOT LEGAL ADVICE
I am not your attorney. Nothing in this presentation should be
taken as legal advice. This is simply general information that
may be helpful. Consult an attorney if you have any specific
questions or concerns.

© 2013 David Lizerbram & Associates®

16

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How Do I Choose a Strong Trademark?

  • 1. How Do I Choose a Strong Trademark? © 2013 David Lizerbram & Associates ® 
  • 2. How Do I Choose a Strong Trademark? When Should I Ask This Question? • Any time you’re selecting a name for your business, product, service, or brand, you’re entering the world of intellectual property. • By carefully selecting a trademark, you’re creating an asset that can add enterprise value to your business for years to come. On the other hand, selecting a weak trademark can lead to marketing challenges, unexpected costs, and potential litigation. • This presentation will provide some basic guidelines as you go through the branding process. • Always do your due diligence and consult a professional if you run into any questions or challenges. © 2013 David Lizerbram & Associates® 2
  • 3. How Do I Choose a Strong Trademark? What is a Trademark? (A friendly reminder) • A Trademark is anything that identifies and distinguishes the source of the goods or services of one party from those of others. • Most trademarks are comprised of words, images, or a combination of the two, but anything that can identify the source of goods or services can be a trademark. This presentation will focus on work marks. • The core purpose of trademark law is to allow consumers to have confidence in the accuracy of labels and other information that tells them where goods or services come from. This allows the market to build trust in the consistent quality of brands. • For more information, please see my presentation What is a Trademark? © 2013 David Lizerbram & Associates® 3
  • 4. How Do I Choose a Strong Trademark? The Trademark Spectrum • Trademarks are thought of as existing on a spectrum from weakest to strongest. © 2013 David Lizerbram & Associates® 4
  • 5. How Do I Choose a Strong Trademark? On the Spectrum: Generic “Trademarks” • A generic term is the common name for a type of good or service. Examples include “Pizza Shop” or “Delivery Service.” • Generic terms cannot be protected as trademarks. Sometimes, it’s not entirely clear if a term is generic. Avoid choosing a term that might reasonably be considered generic for your trademark.  Blau Plumbing, Inc. v. S.O.S. Fix-It, Inc., 781 F.2d 604, 609 (7th Cir. 1986) (“To allow a firm to use as a trademark a generic word . . . would make it difficult for competitors to market their own brands of the same product.”)  In general, a generic term cannot be appropriated from the public domain and thus cannot receive trademark protection. Welding Servs., Inc. v. Forman, 509 F.3d 1351; Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976). © 2013 David Lizerbram & Associates® 5
  • 6. How Do I Choose a Strong Trademark? On the Spectrum: Descriptive Marks and Secondary Meaning • A descriptive mark is an existing word (or words) that is used in connection with the product or service. “Cheesy” might be descriptive of pizza. “Speedy” or “Reliable” might be descriptive of delivery services. • Descriptive terms are granted little or no protection as trademarks. The law recognizes that many businesses have to use these words to describe their goods and services. • Descriptive terms can gain greater trademark protection when they acquire “secondary meaning” through “acquired distinctiveness” – typically by way of extensive use in the marketplace. • Avoid choosing descriptive terms for your trademark unless you are prepared to invest a lot of money over a long period of time establishing that you are the sole entity using this mark in commerce on these goods or services. © 2013 David Lizerbram & Associates® 6
  • 7. How Do I Choose a Strong Trademark? On the Spectrum: Suggestive Trademarks • A suggestive trademark suggests a quality or feature of the product or service, but doesn’t come right out and say it. • Famous examples include GREYHOUND for bus services, CHICKEN OF THE SEA for tuna, and PLAYBOY for men’s magazines. • As you can see from these examples, a suggestive trademark creates a picture in your mind or forces you to think (hopefully in a positive fashion) about the product or service. • Suggestive marks are among the strongest types of trademarks. However, there can be a fine line between suggestive and descriptive, so tread carefully. © 2013 David Lizerbram & Associates® 7
  • 8. How Do I Choose a Strong Trademark? On the Spectrum: Arbitrary and Fanciful Marks • The strongest trademarks are arbitrary and/or fanciful. • Arbitrary trademarks consist of a word or words that have nothing to do with the goods or services. Examples include APPLE for computers or STONE for beer. • Fanciful marks are coined words (neologisms) that have no meaning other than in connection with the trademark. Most pharmaceutical names are fanciful marks; other examples include EXXON and VERIZON. • These marks are, by their nature, inherently distinctive. They are, relative to other types of marks, easy to register and protect. However, they sometimes present marketing challenges, as they don’t suggest or describe anything about the product or service. © 2013 David Lizerbram & Associates® 8
  • 9. How Do I Choose a Strong Trademark? Avoiding Trademark Conflicts • Trademark infringement claims are based on “likelihood of confusion.” This issue primarily applies to similar goods and services. • Ask yourself this: is it likely that a consumer encountering your POPSI soft drink will think it’s the same as – or from the same source as – PEPSI? From a trademark perspective, the answer is “Yes.” • Trademark conflicts are evaluated based on sight, sound, and meaning. So your mark should not look like, sound like, or connote anything confusingly similar to your competitors’ brands. • Very famous trademarks are entitled to a broader form of protection – their owners are entitled to claim “dilution” even if there is no likelihood of confusion or the goods or services are dissimilar. Avoid choosing a mark that is reminiscent of a very famous mark, no matter what line of business you are in. © 2013 David Lizerbram & Associates® 9
  • 10. How Do I Choose a Strong Trademark? Things to Avoid: Geographic Terms • In many cases, geographic terms are problematic from a trademark perspective.  Geographic terms that describe the origin or location of the goods or services usually cannot function as trademarks because all of your competitors also need to communicate that their beer comes from San Diego or their auto shop is located in Philadelphia.  Geographically misdescriptive terms cannot act as trademarks. You can’t use trademark law to deceive customers into thinking your salsa comes from California if it’s really made in Michigan (no offense to Michigan’s fine salsa makers, of course.) • Arbitrary or suggestive geographic terms, however, can function as trademarks. An example is ARIZONA for iced tea – the state did not previously have an association with tea in the minds of consumers, so the mark is not descriptive or misdescriptive. © 2013 David Lizerbram & Associates® 10
  • 11. How Do I Choose a Strong Trademark? Things to Avoid: “Merely Laudatory” Marks • Wording that is merely laudatory (THE BEST this, WORLD’S GREATEST that) can’t function as trademarks. • That type of language describes the goods or services in a positive light. This is so common across all types of goods and services that the law regards it as “puffery.” • Consumers have been trained to recognize this as common advertising language, not as a distinct, brand-identifying trademark. • The US Patent and Trademark Office (USPTO) has rejected proposed trademarks including THE BEST BEER IN AMERICA, AMERICA’S FRESHEST ICE CREAM, and AMERICA’S FAVORITE POPCORN! © 2013 David Lizerbram & Associates® 11
  • 12. How Do I Choose a Strong Trademark? Things to Avoid: Names as Trademarks  The USPTO has four bars to trademark registration on the principal register for names:   The mark is the name of a living individual.  The mark falsely suggests a connection with “persons, living or dead.”   The mark is “primarily merely a surname” (including in languages other than English.) The mark criticizes “persons, living or dead” or brings them into contempt or disrepute. Special Treatment for Authors, Performing Artist Names, or Pseudonyms: 2 Criteria  First, the name must be used on a series of written or recorded works; and  Second, if there is evidence that the name identifies the source of the series does not just identify the author or artist, it may be registered.  A pseudonym can function as a trademark as well, if it meets the criteria above. The USPTO does not make a distinction between real names and assumed names. © 2013 David Lizerbram & Associates® 12
  • 13. How Do I Choose a Strong Trademark? Things to Avoid: Immoral or Scandalous Marks • Section 2(a) of the Federal Trademark Act (Lanham Act), 15 U.S.C. 1052(a), bars the USPTO from registering Immoral or Scandalous trademarks.  The USPTO has stated:    To be considered “scandalous,” a mark must be “shocking to the sense of truth, decency or propriety; disgraceful; offensive; disreputable; . . . giving offense to the conscience or moral feelings; . . . [or] calling out [for] condemnation,” in the context of the marketplace as applied to goods and/or services described in the application…Scandalousness is determined from the standpoint of “not necessarily a majority, but a substantial composite of the general public, . . . and in the context of contemporary attitudes.” Evidence that a mark is vulgar is sufficient to establish that it is scandalous or immoral…Dictionary evidence may be sufficient to show that a term is vulgar if multiple dictionaries, including at least one standard dictionary, uniformly indicate that the term’s meaning is vulgar, and the applicant’s use of the term is clearly limited to the vulgar meaning. Trying to determine what the USPTO will find immoral or scandalous is difficult at best. In recent years, they have rejected COCAINE (for soft drinks) and KHORAN (for wine). On the other hand, there are quite a few registered marks using the word “Ass.” © 2013 David Lizerbram & Associates® 13
  • 14. How Do I Choose a Strong Trademark? Summary • Stay on the right side of the trademark spectrum. • • Descriptive marks are weak at best. • • Generic terms can’t be trademarks. Suggestive, Fanciful, and Arbitrary marks are the strongest. Certain things should be avoided in most cases: • • Merely Laudatory marks • Names as trademarks • • Geographic terms Immoral and Scandalous marks Following these guidelines will help you establish a strong, lasting brand. © 2013 David Lizerbram & Associates® 14
  • 15. How Do I Choose a Strong Trademark? Prepared and Presented by: David Lizerbram, Esq. David Lizerbram & Associates® David@LizerbramLaw.com www.LizerbramLaw.com Twitter: @LizerbramLaw Direct Phone: (619) 517-2272 4080 Centre Street, Suite 205 San Diego, California 92103 Slideshare.net/DavidLizerbram © 2013 David Lizerbram & Associates® 15
  • 16. How Do I Choose a Strong Trademark? FINAL NOTE: THIS PRESNTATION IS NOT LEGAL ADVICE I am not your attorney. Nothing in this presentation should be taken as legal advice. This is simply general information that may be helpful. Consult an attorney if you have any specific questions or concerns. © 2013 David Lizerbram & Associates® 16