The Trademark – Marketing Dilemma

In an earlier post I discussed some trademark considerations in naming your business, products or services (http://www.allbusiness.com/legal/11550325-1.html).  One of the dilemmas that arises when considering different names to associate with your business is the level of descriptiveness of the name you are considering.  A business owner will find it highly attractive to name their business or its crucial products or services in a manner that clearly describes what it does to potential consumers. For example, “Quality Printing” or “Speedy Dry Cleaning.”  Certainly, marks like these convey quite clearly to potential customers what this company does (or hopes to do) and, with that level of descriptiveness the amount of money and effort spent on advertising and marketing just to tell consumers what it is that you do is correspondingly reduced. 

The problem with using a highly descriptive name for your business or its products or services is that merely descriptive marks are not, in general, capable of trademark protection.  A moniker can only be considered a trademark or a service mark if it is distinctive; it must be capable of distinguishing the goods or services upon which it is used from the goods or services of others. A mark that merely describes or names a characteristic or quality of the goods or services is not, under trademark law, distinctive.  Thus, while choosing a descriptive mark may reduce the expenditure necessary to tell the world what you do, that same descriptive mark, or ones quite similar, can be used by your competitors without legal impediment.  So, at the end of the day, is the up-front cost savings worthwhile? 

Descriptive marks may gain a level of distinction by achieving secondary meaning. Secondary meaning means that although the mark is facially merely descriptive of the goods/ services, through use over time and/or a massive advertising campaign, consumers now recognize the mark as indicating a particular source of the goods or services.  So, for example, the mark “International Business Machines” for computers, while descriptive, has achieved secondary meaning in the minds of most consumers and functions as a valid trademark. 

Alternatively, there are marks like “Kinko’s.”  Today, most people know exactly what Kinko’s does but when this business first opened, they had to spend some significant money just to educate the public about exactly what Kinko’s does.  Marks like Kinko’s or Kodak or Xerox are fanciful marks.  They exist entirely on the other end of the scale from merely descriptive marks.  Fanciful marks are marks which have been created solely to function as a trademark and have no other meaning than acting as a mark. Fanciful marks are considered to be the strongest type of mark.

The downside of selecting a fanciful mark is that, unlike a descriptive mark, you must spend a great deal of time and money educating your potential customers about what that mark represents.  On the upside, once your rights in a fanciful mark are secured and the public has been educated about its meaning, you have a strong mark that will enjoy the protections of trademark law and carry with it the goodwill associated with that mark. 

This information about legal issues is for informational purposes only and is not intended to constitute advertising, invite an attorney-client relationship or serve as a source for legal advice. You should not rely upon any information contained herein for any purpose without seeking legal advice from a duly licensed attorney competent to practice law in your jurisdiction.