Once you've decided that your business could benefit from some branding, how do you approach creating a trademark strategy? How do you choose the right trademark? So, the overall goal to keep in mind is that you want to have trademarks that align with both the business and the legal needs of the company. You want to look for a mark or marks that will end up being an asset and build your company's value. You already know that there are some names that should be avoided, just because they can't be protected as a trademark. For example, names that are deceptive or trade dress that's functional. But still you've got a universe of names out there. How do you choose the best trademark? Well, what are you striving for? Ideally, you want three things out of your trademark. First, you want uniqueness. You have to pick trademarks that will clearly connect goods and services with you as the source, and more importantly, connect the goods and services that you put out in the world with only you, and usually this is accomplished by picking a mark that is unique. So, you want uniqueness. Second, you want investment potential. Branding is built up over time with money invested. You don't want too many trademarks. If you spread yourself too thin, you'll end up with less consistent and weaker branding. Third, you want protectibility, so that you can carve out a niche. So, let's think about protectibility for a second. What do I mean by that? A mark that's legally protectable means two things. It has to be able to be registered, and it has to be able to be enforced. For the rest of this video, we're going to be talking about the first of these two prongs, registrability. So, going back to the reason why we trademark, the government is worried about giving you rights to exclude the use of a mark over a word that the rest of the market needs to describe similar goods and services to yours. For example, if I want to open a restaurant and I like to trademark the name restaurant, the government will not let me do that, because chances are that eating establishments across the nation would want to use that word Restaurant in their advertising about their goods and services. So, the more unique the name that I choose for my particular restaurant, the more likely it is that the government would give me a trademark registration over it. So, you could think about trademarks on a spectrum of distinctiveness. The more to the one side of the spectrum that the mark is, the more legally strong it is and the more likely it is to register. Some examples. A mark like Kodak, we would call that a fanciful mark, and a mark like Apple, which we would call arbitrary when you're trying to sell computers, are legally the strongest kinds of marks. No, one else in the market is likely to want to use either one of those words at least at the beginning to represent camera film for Kodak or computers for Apple. The next marks on this spectrum, a little bit less protectible but still protectible, are called suggestive marks. Suggestive marks evoke the good or the service, but there's some leak that needs to happen between the mark and the good or service. Some examples of that are SweeTarts for candy and Airbus for a brand of airplane. Skipping descriptive marks for a second, let's go to generic marks. They're all the way on the other end of the spectrum, and generic marks are not registrable again like restaurant, because the whole rest of the market needs to be able to use those particular words to describe their goods and services. Marks that were found to be generic include mattress.com for mattresses sold online, and Apple for apples. Note that I'm using Apple purposely here. A mark can be both generic and arbitrary depending on the context. So, if you're selling apples, you can't register the word apple for your trademark. But if you're selling computers, you likely can. Sometimes you can have a mark that has a mix of words, some words which may be protectible and some words which may not be protectible. One example of this would be the Hard Rock Cafe. Likely, the owners of that mark had to disclaim the word cafe, although they got probably coverage for Hard Rock as being a suggestive mark. So, their mark has coverage for Hard Rock, but they had to disclaim Cafe as generic. Let's go back to descriptive marks. Descriptive marks are tricky. They're different from suggestive marks because there's no leap required. The descriptive marks clearly describe the goods and services that they protect. Those words should be reserved for the rest of the market. Some examples of that would be Cold and Creamy for ice cream, and Pizzazz for pizza. Now you may disagree that some marks found descriptive are in fact descriptive. I'll be honest with you, trademark law is subjective for sure. Also, whether or not a mark is descriptive is entirely related to the relevant buying class that buys the product that the mark describes. A mark may be very relevant and descriptive to that buying class versus the ordinary consumer, and if you're not a member of that buying class, you may not understand that descriptive nature. Once a mark is determined to be descriptive, it can only become registrable upon an additional connection that comes about because of consistent use. The buying public has to use that mark to absolutely make a connection between the goods and services and you as the source, and this additional connection is called acquired distinctiveness for secondary meaning. So, in summary, when setting your trademark strategy, you should choose marks that are unique, concentrate your investment on one or at least at most a few marks, and stick to arbitrary fanciful or suggestive marks if possible. Although descriptive marks might become protectible, it takes time and money to make them so.
