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Carole DeNatale

Legal Counsel
Mathews, Shepherd, McKay & Bruneau, P.A.

Trademarking - The Selection Spectrum

    In the end, it’s going to be your product and your people that make the real difference. A sketch of an apple with a bite out of it did little to foster one of the world’s best computers and its fastest-growing company. “Hughes Tool Company” was a label virtually masking the sheer genius of its founder, Howard Hughes, and the revolutionary aircraft he created.

    So let’s get some perspective. Your company and its products are unique. You want the public to know that, and so you are going to select and register a trademark. Wise idea. This will give the people an opportunity to make accurate judgments of your firm and its wares. But the trademark, no matter how clever or insightful, will not form the final verdict. That is left to the efforts and attitudes of every member of your company, and the items they produce.

    Why, then, take any care in selecting a trademark at all? Hughes and Steve Jobs didn’t. The answer is that a truly good trademark will spark the public in the right direction. Like a lawyer standing beside his client: it’s the factual worth of the defendant that the jury is deciding. But the lawyer or trademark can point out and remind them of certain beneficial facts that are good to remember. “Nobody Beats the Wiz” keeps pointing the jury toward the low cost.

    Attorney Carole DeNatale, Biz4NJ’s Expert on trademarks, in her last article walked readers through the basic legal processes of trademark registry in her “Trademarking: Why? and How?” (see "Matters of Law.”) This time she guides product developers on making the right trademark choice.

    “Decades of experience have forged a trademark a spectrum from strong to weak,” explains DeNatale. “Nothing is iron clad, but overall you want to select from at least the middle or upward.”

From the weakest:
Generic. This is merely naming your product after the product’s own name.   In today’s over-marketed globe, the simple and direct approach has an appeal. Admittedly, “Coffee Shop” written on a banner of steaming hot coffee does indeed make the product plain. It might even be nice for a chain.

    The problem here is that the U.S. Patent and Trademark Office will probably not accept it for the same reason any capable marketing executive wouldn’t. It’s confusing. While there may be no one with that name, consumers cannot tell your shop from the thousands of others. You would be, in effect, monopolizing everyone’s reputation. No one will know how to identify your business, or what to think about you.

    It is possible to take a generic name as your trademark if you are the product’s sole inventor - Aspirin was once an trademark. But time and competition have turned it into a generic term and now its every producer for himself.

Descriptive. A trademark that simply tells what the product is, e.g. “Prenatal Vitamins” casts much of the same confusion as generic identifiers. The product is not alone. Such marks may be legally protectable, but it will probably take the full five years of examination from the Patent Office to see it through. You may not want to have things pending that long.

    This should not be confused with a trademark which describes what the product does. The hypothetical trademark “Spots Gone” tells of the product’s effect. As opposed to “Stain Remover,” Spots Gone plants in the consumers’ minds a desirable goal. The product solves a problem, and thus is attractive.

Suggestive. “Anywhere from this point on the scale, on, you’re in safe, strong trademark territory,” says DeNatale. The suggestive mark alludes to some benefit of the product. “Coppertone” sun tan lotion implies that the user will sport an alluring, healthy hue. It conjures images of outdoorsy activity, natural beauty, and of visages devoutly dreamed. All brought about by the color of a U.S. penny.

    Hitting the right level of suggestivity can be difficult. “Bounce” fabric softener might at first seem an odd choice for a product that primarily eliminates static cling. However, like Coppertone, it goes beyond the actual function and takes the imagination into an ideal the consumer wants from his clothing. And everyone is more likely to purchase an ideal, than a function.

Arbitrary. An excellent slant for products in competitively crowded fields. The Mackintosh Apple, Virgin Airlines, Camel Cigarettes; none of these makes any attempt at presenting the relative value of their products. All computers are fast, all airlines fly to exotic locales, and all smokes taste good to the addicted. So in these cases the makers went for a mark that would totally distinguish them within the field. In these cases, often the less they have to do with the industry the better. Just get a fun brand name and image, keep hammering it out, and let your product do the talking.

Fanciful. Legally and memorably, these made-up trademark names, like Exxon and Kodak are considered the strongest. The goal is to have a trade name that sounds nicely rolling off the tongue and is truly distinctive. DeNatale gives one caveat here: check out all possible uses and slang associated terms in all languages. There was the famed “Chevy Nova” mark which in Japanese translated into “won’t start.”

Phonologics. One of the naming agencies’ prime tools, Phonologics involves twisting parts of several words into one single trademark. It can produce some amazing effects. One clever trademark creation method is to combine prefixes and suffixes for the desired effect e.g. Aleve. Try uniting an effect and with the actual substance - e.g. “Rap” (first syllable of rapid) and the name of the drug that gets there fast. Adding a foreign word or prefix can often take a generic into the strongly suggestive. Adding “La” to Yogurt transforms a generic term into something French - the land where food is king.

    Whatever your final choice, remember you are going to be stuck with it for the lifetime of your product. So before running off to a trademark attorney, test it on a broad range of people. Ask them what they actually hear from the mark. Then be prepared to listen and adjust.
Biz4

Carole DeNatale came by her legal bent naturally, growing up in Buffalo, New York under an attorney father whose example led both Carole and her brother into the trade. In 1976, DeNatale graduated from Mt. Holyoke College, and then took her law degree from SUNY at Buffalo Law School. For several years she served as in-house counsel with Wyeth, then Pfizer, Colgate-Palmolive, and other Fortune 500 companies.
    “I liked the in-house work,” DeNatale says, “but a few years back, I wanted to deal with more small and mid-size companies.”   So she made the move to independent law firms. For the past year, she has practiced in the trademark and copyright group of Mathews, Shepherd, McKay & Bruneau. She specializes in global brand strategy, enforcement, licensing, trademark conflict litigation, and related fields.

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