Choosing a new trademark is a thorny task for many
companies. So we asked Tara Benson, Esq., a seasoned intellectual property
attorney, for her thoughts on how to avoid the most common pitfalls. Benson is
a senior member of the trademark practice group at Giordano, Halleran &
Ciesla, P.C. During her career, she has handled trademark work for such clients
as Tazo Teas and Amazon.com; and also served as in-house counsel for Library
Video Company/Schlessinger Media, the leading distributor and producer of
educational media.
Q: Tara, it often seems that tension between
marketing and legal departments is the start of trademark troubles. Do you
agree?
Absolutely. In my experience, marketing departments
often gravitate towards a mark which describes the product or service.
Descriptive marks ensure that the customer can easily identify the product.
Unfortunately, descriptive marks will not likely win the right to be registered
and probably don’t do much to distinguish your product in the marketplace.
Q: So does that mean you should avoid
descriptive marks at every turn?
In short, yes, it is best to avoid them whenever
possible. The strongest marks (and those that are able to achieve trademark
protection) are fanciful, arbitrary or suggestive marks. A fanciful mark is a
word, which has no meaning aside from its use as a trademark, such as Kodak
or Exxon, while arbitrary marks are existing words with meanings that
are generally unrelated to the product with which they are used, such as Apple
for computers. Finally, suggestive marks are those which suggest the identity
of a product, but do not merely describe the product (e.g. Coppertone
for suntan lotion). It is important that a marketing department be aware of
these necessary qualities while brainstorming names for new products or
services.
Q: Do clients become emotionally attached to
names they are considering?
Yes, often companies will create an internal
development name for a product or service. Sometimes people will become so
attached to this development name that they are not willing to part with it
once the product or service is ready to be launched. Falling in love with an
internal development name prior to completing a full trademark search and legal
review is one of the most common problems which companies encounter. I always
stress the importance of completing a trademark review on a mark before company
employees become too attached to a name.