3 reasons why marketing and legal teams may be at odds over new brand name ideas
It may sound counterintuitive but often what constitutes a “good” brand name from a marketing perspective and a “good” proposed trademark from a legal perspective are different things. While legal teams often have the reputation of being “killjoys” from the viewpoint of marketing or R&D teams, there are reasons why trademark professionals are frequently cautioning the use of proposed brand names that everyone (except legal) is excited about.
This post covers some reasons why a legal team may be hesitant to greenlight a proposed brand name and offers some background information that companies can use to choose strong marks from both marketing and legal perspectives.
1. The proposed brand name is generic.
Generic terms are those that the relevant purchasing public primarily understands as the common or class name for the goods or services.[1] From a marketing perspective, it can be good if the brand name refers to the category of a good or service. Generic terms convey immediately convey to the consumer the class of product or service. However, this can be bad from both a marketing and legal perspective because generic terms cannot differentiate two different company’s products or services from each other.
In trademark law, this concept of differentiating goods or services is called “distinctiveness.” “Distinctive” terms are those that distinguish one’s goods or services from those of others. Only “distinctive” terms are eligible for federal trademark protection and full registration.[2] Generic terms cannot, by definition, be distinctive.
For example, the term “fruit snacks” has been identified by the USPTO as one that is likely generic for processed fruit snacks made with ingredients comprised of fruit. This may come as a surprise to many, given the popular Welch’s (PIM Brands) famous fruit snacks products. Although PIM Brands has several trademarks relating to these products (e.g. AMERICA’S FAVORITE FRUIT SNACKS and SLICE FRUIT SNACKS), you will notice on the federal registrations that the term, “fruit snacks,” is disclaimed on these registrations.
Disclaiming a term means that the owner of the registration makes no claim to the exclusive right to use that term. For example, PIM Brands does not have the exclusive right to use “fruit snacks” for processed fruit snacks. Other brands can use this generic term for this category of products, which is why you will see the term used by many different parties. In short, use of a generic term means that the user cannot exclude others from using the same term. Generic terms are not protected by trademark law and any legal or marketing expenditures used in attempt to protect such a term as a word mark[3] will be without return.
2. The proposed brand name is descriptive.
Descriptive terms are those that describe an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services.[4] Descriptive terms can also be desirable from a marketing perspective; brands that describe a quality or characteristic of a product or service can be easy to remember and create a positive impression on consumers. However, descriptive terms are not inherently distinctive and can only be eligible for full registration or trademark protection in court upon acquiring distinctiveness. This means that descriptive terms become valid marks only when they have acquired consumer association between the term and the source of the good or service.
To continue with the “fruit snacks” example, the federal trademark registration application for AMERICA’S FAVORITE FRUIT SNACKS (for processed fruit snacks) was initially rejected by the USPTO as merely descriptive.[5] The USPTO argued that common dictionary definitions of “fruit snacks” defined the term as a “processed snack usually in gummi form that consists of sugar from concentrated fruit juices.” Moreover, the USPTO argued that the mark was descriptive because of the self-laudatory aspect of the term (“America’s favorite”), which is regarded by USPTO as an indication of descriptiveness. Ultimately, PIM Brands was able to overcome this rejection by asserting a claim of acquired distinctiveness backed by the owner’s continuous use of the mark for over five years (the use started in 2003 and the application was filed in 2017).
If PIM Brands had not already been using AMERICA’S FAVORITE FRUIT SNACKS for five continuous years, PIM Brands would have had to show other evidence of acquired distinctiveness. Such evidence can include advertising expenditures, consumer surveys, market research, and/or consumer reaction studies amongst other things. [6] If PIM Brand’s had not been using the applied-for mark at all at the time of application, it would likely have paid for extensions until the time of use (if within around two years) or been published on the Supplemental Register, not the Principal Register. In many cases, the Supplemental Register acts as a “parking space” for terms that are capable of acting as a mark but currently lack the requisite distinctiveness to be published on the Principal Register. Marks registered on the Supplemental Register cannot be enforced against others.[7] This means that if another company uses a mark similar to that published on the Supplemental Register, the owner would not be successful in a trademark infringement action unless it can show that secondary meaning was acquired before use by the other party. However, the USPTO can deny registration of marks confusingly similar to those on the Supplemental Register.[8] Under different circumstances, PIM Brands may still have eventually been issued registration. However, the process of doing so would likely have been expensive and time consuming.
In summary, descriptive terms can act as trademarks. However, there are important considerations to ensure trademark protection and minimize legal costs. If an entity wants to assert trademark infringement of the term without federal registration, it will need to show that the mark has acquired distinctiveness in court. If an entity is seeking federal registration of a descriptive term, it will need to show acquired distinctiveness to qualify for the Principal Register. Proving acquired distinctiveness can be expensive. Filing extensions with the USPTO can be expensive. Moreover, if an entity isn’t already using the descriptive term as a mark, another party could acquire distinctiveness for the term first. Additionally, it’s possible that the term can become generic before the term acquires distinctiveness. Therefore, use of a descriptive term for a brand runs the risk of not being able to exclude others from using similar terms and/or incurring lots of legal costs in the process of showing trademark validity.
3. There is likelihood of confusion between the proposed brand name and an existing trademark.
Likelihood of confusion with an existing trademark poses two issues: registration availability and litigation risk. Federal trademark registrations can be rejected by the USPTO for likelihood of confusion with a registered mark. This means that an entity can spend money on federal registration application filings only to ultimately be denied federal registration. For most entities, it makes more business sense to proactively change a proposed brand name to ensure that legal and branding efforts result in a mark that can be nationally enforced.
The more serious of the two issues is risk of trademark litigation. The test for trademark infringement involves a multi-factor analysis of likelihood of confusion.[9] The factors in this analysis vary slightly by jurisdiction but the essence of the test remains the same for all: is there likelihood of consumer confusion between the two marks at issue? Some commonly assessed factors include: (a) the similarity of the marks; (b) similarity of the goods or services themselves; (c) the parties’ channels of trade or marketing; (d) the strength of the marks; and (e) and any evidence of actual confusion. It is important to note that this is not a complete list of factors, rather, a good general starting place for conceptualizing trademark infringement.
A proposed mark that is similar to an existing trademark for similar goods or services will likely be flagged as high risk for trademark litigation by legal. Although tolerance for litigation risk varies amongst entities, for most it makes sense to minimize litigation risk by pursuing the use of brand name that is not likely to cause consumer confusion between it and an existing trademark.
Searches on the USPTO database and common search engines can help identify marks that are similar to a proposed mark. Search results can then be assessed to determine likelihood of confusion, availability for federal registration, and level of litigation risk. Conducting these searches and analyses before use of a proposed mark can help an entity prevent trademark litigation and all of the associated costs.
If you are a creator or entrepreneur with trademark questions about brand names, I invite you to book a Consultation with us!
[1] TMEP § 1209.01(c).
[2] “Full registration” refers to federal registration on the Principal Register.
[3] You may notice generic terms that are part of a logo or design mark. Design marks that incorporate generic terms as text only preclude others from using confusingly similar designs; the scope of the mark does not include the text separate from the logo.
[4] Trademark Manual of Examining Procedure (“TMEP”) § 1209.01(b).
[5] See Reg. No. 5410458.
[6] TMEP § 1212.
[7] See TMEP § 815; 1201(b)(ix).
[8] See TMEP § 1201(b)(ix).
[9] See e.g. In re E. I. Du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973); Helene Curtis Indus., Inc. v. Church & Dwight Co., 560 F.2d 1325, 1330 (7th Cir. 1977); Polaroid Corp. v. Polaroid Electronics Corp., 287 F.2d 492 (2d Cir. 1961).