The Importance of Distinctive Branding - A Legal Perspective

When strategically thinking about choosing a brand name and building your business around it, there are a lot of considerations a business owner must make. Amongst top considerations is the legal protection afforded to your brand (also used interchangeably as a “trademark”). Essentially, when you begin thinking creating a brand, you’ll need to consider the legal strength of the trademark(s) you pick. This is important as it impacts the degree to which a court will protect you against misuse of your branding by competitors, and may implicate your own liability for choosing a trademark that is perhaps too similar to those used by other companies.

Know from the get-go that a legally strong trademark has two basic characteristics: The first is that it successfully identifies the goods or service in a consumer’s mind. The second is that through use (and trademark registration with the USPTO), competitors are prevented from using it (or a similar mark) in any context similar to yours.

Once you understand the legal importance of picking a strong trademark, the next step is actually choosing one. You’ll want to focus on the distinctiveness of your brand or trademark – the most distinctive marks will be most protectable legally speaking (compared to generic marks which are not protectable at all). Distinctive marks fall into three basic categories: coined, arbitrary and suggestive. Business owners should consider trademark strength on a spectrum, where coined marks are afforded the most protection, and descriptive or generic marks afforded no protection. I’ll discuss each in turn below.

Coined Marks. A coined mark is simply made up. Examples of well known coined marks include Uber, Reebok, and Tylenol. These marks have no other meaning, and are legally the most defensible. They are also the least likely to be in use by others.

Fanciful or Arbitrary Marks. Fanciful or arbitrary names are also considered legally distinctive. One prominent example is Macintosh or Apple (describing computers and personal electronic devices). Other examples are Penguin (for books) or Camel (for cigarettes). Arbitrary or fanciful marks are common words that are used in an arbitrary manner on goods and services. This is to say that they have nothing to do with the actual goods or services that they identify. Pick an arbitrary word to describe your business, and so long as nobody else is using it in a similar manner, you’re in good shape.

Suggestive Marks. Words that suggest the goods and services provided in order to create an idea in the customer’s mind about the goods are services are called “suggestive.” Suggestive marks are closely related to fanciful marks, and are considered legally strong because of their ability to indirectly associate certain qualities with goods and services. Classic examples are Greyhound (for a bus service), and Jaguar (for automobiles). These are good too, but afforded slightly less protection than coined or arbitrary marks.

Descriptive or Generic Marks.. Descriptive marks (or more properly, "merely descriptive marks") are marks which merely describe the services or goods on which the mark is used. Generic marks are words which actually name a product and are incapable of functioning as a trademark (for example, apple for the food apple). Business owners should stay away from selecting either descriptive or generic marks. Choosing marks that describe your services or goods simply don’t afford you protection, and don’t bolster brand recognition.

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Understanding the basics is always the best place to start before choosing a brand element or trademark. If you understand the basics, don’t worry too much about the nuanced distinction between suggestive marks and those considered fanciful or arbitrary. Marks fitting into those categories can often be argued more than one way. The important thing is that they’re considered distinctive, and because they’re distinctive, they afford you the most legal protection. So, when you’re thinking about your branding strategy, go out on a limb, and get creative. We encourage business owners to come up with a number of ideas which legal counsel can help you evaluate.

Building a brand? Reach out to us. We’d love to help you through the selection process, due diligence, and registration - all critical components to ensure that your brand strategy is strongly positioned legally. SK&S Law Group partner Christina Saunders has nearly a decade of trademark experience, and loves to talk all things brand related.. Give her a call today at 303-396-0270, or send her an email at saunders@skandslegal.com.