Kissing frogs: tradeMARK selection

Previously I addressed use of marks in the United States and the distinction between marks associated with products and marks associated with services. There are other categories for marks that related to the nature of the actual designs and/or logo, in lieu of use or registration. This distinction is important for selection of marks, because business owners should be aware of advantages and disadvantages of mark categories.

Before addressing the first category, it is important to understand that in the United States there are images that never function as trademarks or service marks. These images are logos, phrases, words or designs that designate the exact product sold, distributed or promoted. For example, if the business sells apples it cannot acquire rights to a trademark designated ‘apples.’ This is true even if the owner places a superscript or subscript so the word appears as ‘applesTM.’

A similar example would be the word ‘plumbing’ for a business service that is exclusively plumbing. The reason these examples never qualify as marks is that generic words for objects and services must remain available to the public. For example, it is clear that everyone requires the word ‘apple’ to purchase, speak and write about this specific fruit. The same is true for private appropriation of the word ‘plumbing’ that is necessary in everyday speech and commerce.

That being said, in the first category the strongest trademarks and service marks are known as fanciful marks. Fanciful marks are combinations of words, letters or perhaps numerals, colors and designs that did not previously exist. For example, Coca-Cola® is an expression that did not previously exist in any language. However, this expression has been federally registered for over 100 years, and it is universally associated with carbonated beverages.

Prior to a new distribution campaign, if the business owner coins a fanciful term or design the initial marketing phase will be challenging. The reason? The new image will not initially appear related to the product or services, and so there is a completely new commercial association the potential purchaser must learn. With sufficient artful advertising the unique mark/product eventually becomes strong in the purchaser’s mind and not easily confused with marks of competitors. The downside of adoption of a fanciful mark is a greater advertising requirement. Consequently the business requires a considerably greater financial investment to associate the product or service with the mark in the consumer’s mind.

The second strongest category of marks is known as arbitrary marks. Arbitrary marks are words that previously exist but are initially completely ‘mismatched’ and logically unrelated to products or services that they represent. Revisiting our ‘apple’ example, we know that the relationship between an apple as a product and the word ‘apple’ never qualifies for trademark protection. However, most people are aware that Apple® is a trademark for prominent computer products. So, what’s the crucial difference? The word ‘apple’ now designates computers, and the only gap in public vocabulary is for this relatively narrow use of the word for a product unrelated to literal ‘apples.’

The downside for arbitrary marks is the same as that for a fanciful term and/or design: The creation of an association with arbitrary terms in the consumer’s memory requires a sizeable advertising budget.

© 2011 Adrienne B. Naumann
Ms. Naumann does not sponsor or endorse the advertisements at adriennebnaumann.wordpress.com.

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