Discussions about trademarks often raise more questions than they answer. For instance, the strength or significance of a mark frequently is unknown until it comes down to litigation between two competitors. Nevertheless, choosing the right mark, name, or logo in the first place may go a long way in establishing a brand, protecting a brand’s investment, and discouraging copycats and weakening later on.
Package Design spoke with trademark lawyer David M. Perry, partner at the Blank Rome LLP law firm (www.blankrome.com) in Philadelphia to learn about the current trademark climate. He shares his advice on trademark strategy and brand development, and offers counsel on avoiding common mistakes.
PD: What’s the simplest way to describe the function or purpose of a service mark or trademark?
David M. Perry: A service mark or trademark is any word, symbol, or device used to identify one’s goods or services and distinguish them from the goods and services of others. This can include words, icons, shapes, and even smells and sounds, among other indicators. One important exception is that trademark protection does not extend to features that are primarily functional—by and large, patents protect the functional aspects of a device, product, or package. As a rule, brand owners should choose marks that are distinctive, appropriate, and easy to register. Of course, that’s easier said than done.
How should a design agency respond when a client says: “I want something trademarkable”?
When speaking of packaging, there’s a significant distinction in U.S. law between the protection of a name or logo and the protection of a shape. The latter is usually a challenge. When it comes to a shape, color, sound, or even motion, some marks can be protected if they’re legally distinctive. The law makes clear that some elements require an extra layer of meaning or distinctiveness, in which case you’re going to be probing the client about the extent of their use and the kind of market presence they have.
Can shapes or designs be protected to fend off knock-offs?
Protecting shapes means you are picking a hard road, because it seems that the current legal climate makes it very difficult to protect shape. There’s deeper scrutiny when asking for protection, and a brand may have to come forward with pretty significant evidence for the case, both in registration and litigation. Some shapes are unique out of the box, but more commonly a brand owner has to wait a long time for marketplace penetration and recognition for a package design feature to be protected with a trademark registration.
What are some ways to make that effort more tenable and discourage knockoffs?
The standard is creating a shape that’s “inherently distinctive.” Think of how Aunt Jemima is a unique package for maple syrup. It’s sometimes hard to predict what government examiners will decide, and you have to actually avoid functionality. If you have a package with features that are clearly non-essential to the function, that could have been done many different ways, that might be a good candidate for protection. Or a design that’s not driven by efficiency or cost reduction. If it costs more as opposed to less, you’re headed in the right direction for a package that right off the bat could be inherently distinctive, but cost is just one part of the inquiry.
What elements make it easier to register a trademark with the government trademark office?
I always remind clients that a trademark is designed to be a “unique source identifier,” which is a benchmark for the trademark office. Companies often lose sight of this and look at successful trademarks and want to mimic them in order to achieve the same effect. The trademark office will look critically on a company trying to trade on somebody else’s goodwill. Instead of measuring itself against the competition, a company should focus on how to carve out its own unique space in the market.
Why do some trademarks fail to carve out a space in the marketplace?
There are a lot of reasons why trademarks fail. A common reason trademarks fail is “confusion.” Are you sure your mark is going to be readily distinguishable from the competition? The trademark office might reject an application for this reason alone. The goal is to be unique to consumers who, when they see the brand, are going to see you and only you. Weak or “descriptive” marks also fail in the marketplace because they become diluted over time.
Can you tell by the type of name or logo whether it has an inherent strength?
People often disagree on this—lawyers and trademark specialists commonly plot brand names and logos on a spectrum of marks. Some consumers realize that not all trademarks are created equal in terms of their inherent distinctiveness. The spectrum begins with generic names that are the “apt” names for the product, which are not protectable by law at all. The next level a lot of companies use is “descriptive” terms that are marginally more protectable, but only with extensive effort. The sweet spot is “suggestive” terms that bring to mind a feature but do not directly describe it. A good example is Endurance, which suggests longevity and performance, and which gives you a good feeling about the product or service, but doesn’t actually describe anything. Marks like these, however, can become weakened through familiarity and copycats.
What are the most protectable kinds of names or logos?
The most protectable are “arbitrary” and “fanciful” names. Brand names that are “arbitrary,” like Mountain Goat for software training or Torch for a nightclub, take ordinary words and use them in a way that has nothing to do with the product or service. Most protectable are “fanciful” where the company coins a word from scratch. However, most companies don’t want to go that route because it can take a lot more time and a lot more money to educate the consumer about what the name actually stands for. That’s the pushback that marketing teams and brand developers will often give the legal side of the equation. The challenge is helping a company find the right middle ground that has inherent strength and is a path that no one else has gone down before in their space.
Why do many companies take calculated risks in not performing
Trademark confusion has a lot of shades of gray in it. The standard is “likelihood of confusion” and it’s a balancing of a variety of factors, at least in the U.S. It depends how confident a company is about the space they’re in or how stubborn they are about going down a particular path. After a few years, you begin to see when a certain amount of diligence would have saved some serious headaches and costs. The lawyer’s warning might not have prevented the headache completely, but it might have dictated how a company could have improved its chances at the Trademark Office.
Is it often a case of “once bitten, twice shy”?
When companies have been burned, they understand the value of the upfront investment. They carry a certain savvy that others who haven’t been taken to task can never fully appreciate. They understand it’s critical to quantify certain risks, whether fleeting or long-term. If I’m doing my job well, I’m at least getting them to appreciate what the level of each risk is, and what the intangibles are. You don’t know what’s inside the mind of competitors. A lot of big brands didn’t become big brands by sitting back and waiting. A lot of them became big brands in part because of a zealousness in carving out a space in their market—oftentimes a bigger space than you might think.
Suppose a client says: “You have carte blanche to redesign the package, but don’t touch the logo.”
Is it warranted to be cautious, or can elements be tweaked and it’s still trademarked?
There are many examples of redesigns where brands evolve successfully. There are examples of redesigns that have upset the marketplace, but even from a trademark protection standpoint, law provides space for the modernization of a logo. There’s a degree to which you can update a trademark without having to reapply to the U.S. Trademark Office, but that’s not always a black and white case. The standard at the Trademark Office hinges on avoiding “material alteration,” which is not always agreed upon.
I rarely find myself telling a client not to modernize its identity. But I’ve found that there are sometimes big disconnects between the legal protections, the efforts that are going into registered trademarks around the world, and what the business units are doing on the ground. The companies most successful at protecting their brand and fending off copycats are the companies that have a smart coordination of both their marketing and legal departments, and those that foster an open dialogue that promotes creativity as well as patience and a willingness to listen.
SELECTING YOUR MARK
In addition to selecting a mark that’s strong, and thus easier to protect, one should try to select a mark that’s easy to register. Be culturally sensitive when selecting a mark, and consider other possible meanings of the mark, both in the U.S. and abroad.
When selecting a registrable mark, avoid:
• immoral, deceptive, or scandalous matter.
• matter that may disparage or falsely suggest a connection with persons
living or dead, institutions, beliefs, or national symbols or bring them into contempt or disrepute.
• the flag, coat of arms, or other insignia of the United States, a state or municipality, or a foreign nation.
• the name, portrait, or signature of a living person (without permission).
• the name, portrait, or signature of a deceased U.S. president without the permission of the surviving spouse or estate.
• marks that are merely descriptive, such as City Hardware.
• marks that are deceptively misdescriptive.
• marks that suggest a geographic location unrelated to the company.
• marks that are primarily a surname, which are considered descriptive and difficult to prove “distinctiveness” in the marketplace.
• marks that, as a whole, are functional. For instance, bright orange might not be protectable as a mark for certain goods in the safety arena.