Do You Need a Trademark, or Is a Patent More Appropriate?

Rich Goldstein

Founder & Principal Patent Attorney
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When it comes to whether something should be patented or trademarked, the question is: Are you building a brand, or protecting a concept? If you are protecting a product concept or design, patent law is the clear choice. Assuming that a patent is available for the subject matter of your concept, that’s the way to prevent others from pursuing the same product concept.

A trademark, however, is useful—and often crucial—when you are building a brand for your product or service. After taking the appropriate steps to protect the product concept itself, and as you prepare to launch the product into the world, it’s important to understand and consider the role trademark law and branding will play in launching your product and helping your business grow safely.

Trademark law is designed to prevent consumer confusion between branded products. For example, when you walk into a grocery store to buy a soft drink, and you see a familiar red and white can, with a familiar writing style, that says “Coca-Cola®,” and has a wavy line underneath the name, you know what to expect from that product. You can trust that it’s from the same company as the product you got the last time you purchased a soft drink in a can like that. So in essence, trademark law protects your expectation that when you see that soda can, you are able to trust that you are getting the product that you think you are getting, and not another company’s soft drink.

Trademark law actually protects all of the distinctive elements found on the Coca Cola® can, including not only the name, but also the color scheme, the writing style for the name, and even that wavy line symbol. Consider that even if the can didn’t actually say “Coca-Cola®,” but contained some or all of those other elements, you might be confused into thinking it was “The Real Thing®” when it was, in fact, a knock-off.

When this type of confusion exists between a branded product and a competitor, there is a trademark problem. If the issue gets to court, the way that the court determines whether there is trademark infringement is to apply the “likelihood of confusion” test. That is, would a consumer likely be confused as to the source of the product based upon the circumstances?

A trademark—also known as a “mark” or a “brand”—is the thing that you use to distinguish your product in the marketplace, so that people who have used or heard of your product will end up buying your product, and will not be misled into buying a competitor’s product.

What You Need to Consider When Picking and Protecting a Strong Brand Name

In general, the more distinctive the mark, the more protectable it is. On one end of the scale, generic names such as “soda” or “cheese” are not distinctive enough to be protectable. They are not protectable because these are the common names people use when asking for such products, so it would not be fair to allow one company to stop other companies from using these common words when describing their own products.

On the other end of the scale, ‘arbitrary’ or ‘coined’ names, such as “Apple” for computers or “Nike” for sportswear, are among the most protectable, because there is no need for competitive sneaker companies to use the word “Nike” when talking about their own products.

Similarly, because the word apple is arbitrary in the computer field, there is no need for competing computer companies to use the word ‘apple’ when promoting their own product. And how about “Amazon”? What does this region in South America have to do with selling books? Absolutely nothing! Therefore, choosing Amazon® as a brand name created a wide territory that prevented other online booksellers from coming anywhere close to their brand name, and helped to create an online selling empire.

Choosing the Right Branding for Your Product

When you are picking a brand or mark for your product, two things are very important: avoiding confusion, and being distinctive.

First, to avoid trouble with others, you want to avoid branding your product in any way that would create a likelihood of confusion with existing product brands. You need to find out what are the closest trademarks, and determine whether your intended mark would create a likelihood of confusion. Of course, the best time to do this is before you invest substantially in developing your brand. At that early point, it’s relatively easy to change course and pick a new name, without losing substantial resources that would otherwise be invested in a problematic brand. Clearly, being forced to change the name of your company or product after it’s experiencing success would be a nightmare!

And of course, if your intent is to make your product appear or sound like a famous product—so that it will remind your customers of the famous product, you are asking for trouble! It’s kind of like speeding past a police station. Chances are, you are going to have a problem.

Second, you want to make sure that you pick a name that’s inherently distinctive, so that it stands out to consumers as something that naturally seems like an exclusive brand name. You want a brand that has enough uniqueness so that, if a competitor were to later come out with a similarly branded product, you could easily demonstrate to a court that consumers would be confused—thereby protecting your brand.

As an example of how to pick a strong brand, let’s imagine we are launching a package delivery service, and want to pick a distinctive mark. We might naturally start by thinking about what characteristics people are looking for in a delivery service. That might lead us to a name like “Fast Delivery Service.” Hey, it sounds like a name that would be attractive to consumers wanting the delivery to be fast, doesn’t it? But from a trademark standpoint, it would be a poor choice, because ‘fast’ simply describes a common, sought-after aspect of a delivery service. You could even say, ‘fast’ doesn’t sound like a brand name, just a characteristic. For example, “Red” licorice is not protectable because “Red” simply describes a characteristic of the product.

Accordingly, laudatory terms, such as “Premium,” “Best,” and “Reliable,” are typically considered descriptive. Generally, descriptive words are not protectable. Under certain circumstances, however, you can protect descriptive phrases, but this is relatively rare, as it involves proving that the public already thinks of it as your brand (for example, “Holiday Inn”). But this is a difficult path and not recommended—unless you are already heavily invested in a descriptive company name and you want to do what you can now to protect it.

Moving up the ladder of distinctiveness, a better choice might be “Cheetah Delivery Service,” because ‘cheetah’ doesn’t actually describe a characteristic of delivery services, but by referring to the fastest animal, it’s suggestive of speed. Suggestive marks can form strong trademarks.

As it turns out, however, a quick search reveals that there are several companies in the delivery industry already using “Cheetah.” When several companies are already using a name, it’s not distinctive. In such cases, there’s little likelihood of confusion—because none of these companies can prove that consumers view the name as being associated with any one particular company. This highlights the importance of “policing” your mark. That is, once you have established your brand, it’s important to watch for any potential infringers. When you spot one, you must take immediate action to stop them. If you are not paying attention, and then wake up one day and notice that five other companies are using the same name and have been doing so for some time, it’s probably too late to do anything about it because your mark will have lost distinctiveness.

An even better choice would be to pick an ‘arbitrary’ word—a word that has nothing to do with package delivery. For example, “Rock Star Package Delivery” would probably create a strong trademark. If we established this as our brand, there would be no legitimate reason for a competitor to use anything similar to “Rock Star.” Clearly, if they try, it would be easy for us to establish that they are trying to confuse consumers and take advantage of the good will we have built up among our customers.

An really strong choice would be to invent a word. A so-called ‘coined’ or ‘fanciful’ mark has the greatest distinctiveness. For example, we could call our business “Airnillo Package Delivery.” From a trademark standpoint this mark is extremely distinct, because “Airnillo” is a made-up word. It might not be the best name, but, to be honest it can be hard to come up with a word that doesn’t exist. Try combinations of syllables, come up with a list of several words, and then do an Internet search. You will probably find that many of the words on your list already exist. The point is, when you create your own word, you are laying the groundwork for the strongest trademark protection. Then, creating strong branding is a matter of making investments in promotion of the brand.

Sometimes, a strong brand starts naturally and immediately when you find a clever combination of words, and you and others say, “Hey, that’s a great name.” Such a brand might be inherently strong from the beginning. More often, however, strong brands are created over time, through promoting your product. eBay®, Google®, Amazon®, Gucci®, and the like, have strong brands because of the effort they spent launching and promoting a product or service that people want, and thereby built recognition for their brand names among their target consumers.

In sum, it’s best to focus on branding that is not likely to be confused with existing brands, and is distinctive enough to be worthy of your advertising, marketing, and promotion budget.

At this point, you should have a general understanding of what trademarks are about, and what potentially makes a good brand name. It should also be clear that before launching any branded product, you should seek the advice of an attorney well versed in patent and trademark law. In particular, it’s important to have the right research conducted to find out about similar marks to your intended trademark. It is equally, if not more important to get the advice of someone who can interpret this research and advise you regarding your particular circumstances—about how to avoid conflicts with existing marks, how to pick a strong mark, and how to effectively establish trademark protection.

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