Be careful about how you use the words thank you in your business branding. That's right because Citibank has actually trademarked THANKYOU. And, in 2016 they contested the use of these common words when AT&T launched a rewards program called "AT&T Thanks." AT&T could probably afford such a battle, but could you?

In more recent news, when small business owner Owen O'Callaghan submitted his trademark application in March it was met with opposition. The notice came from Absolut, the company that makes the popular coffee liquor, Kahlua.  The company successfully blocked O'Callaghan's coffee brand, Kaholo Coffee, from trademarking because it is strikingly similar to Kahlua and may cause confusion for consumers.

"The effect on me is an incredible amount of stress because I am not a lawyer," O'Callaghan told a Hawaiian newspaper. "I cannot afford an intellectual copyright lawyer." This dispute with a company that has the financial means to keep fighting has already cost O'Callaghan thousands of dollars and is likely to cost much more. However, had the small business owner not filed a trademark application prior to selling his brand nationally, the consequences may have been devastating.

"Building a brand takes a lot of time, effort and money," says Ali Smith, Product Marketing Manager for Trademark.com. "Your trademarks represent the foundation of your company, the identity and goodwill, and often the bulk of your company's value (especially at the beginning). Once you've spent that time, effort and money, you will want to protect your brand by seeking trademark rights."

Choosing a strong mark is critical to your success. 

Case in point: earlier this May we saw an update to the Trademark 'War of Words' over "Ugg" boots, which ordered Deckers' small rival to pay $450,000 in damages. A verdict like this can shut down your business--and with controversy over whether "Ugg" should have even been trademarked, it's important that small business owners understand what makes a strong trademark from the start.

The most valuable trademarks of 2019 are worth over $40 billion with Google's marks being worth $44.3 billion and Microsoft's marks not far behind at a whopping $42.8 billion. Generally speaking, marks fall into one of four categories: fanciful or arbitrary, suggestive, descriptive, or generic, according to Smith. The category your mark falls into is significant in determining registrability with the United States Patent and Trademark Office (USPTO) and the ability to enforce your rights to the mark successfully.

Below, Smith offers her insights on how to choose a strong mark to keep your business safe from a 'War of Words' of your own.

The strongest marks are fanciful or arbitrary marks.

These marks are most easily protectable because they are inherently distinctive. When a mark is inherently distinctive you do not need to wait for your mark to acquire distinctiveness in the marketplace in order to register your mark with the USPTO. Fanciful marks are words with no dictionary or other known meaning. For example, Exxon gasoline, Kodak for camera and photography related products, and Pepsi for soft drinks are all fanciful marks. Arbitrary marks, on the other hand, are actual words that have a common or known meaning but not in relation/association with the goods or services they are branding. For example, Apple for computers is a strong trademark because it does not describe a quality or characteristic of a computer.

Suggestive marks are also strong marks.

If you do not choose a fanciful or arbitrary mark, your next best option is a suggestive mark. Suggestive marks suggest some attribute or benefit of the goods or services, but do not describe the qualities or a connection to the goods or services themselves. Suggestive marks, when applied to the goods or services in question, require some degree of imagination, thought, or perception to reach a conclusion as to the nature of those goods or services. Chicken of the Sea for canned tuna and Coppertone for sunscreen are examples of suggestive marks.

Descriptive marks are words or designs that describe the goods and/or services.

Such marks are generally more difficult to protect and are considered "weaker" than fanciful, arbitrary or suggestive marks. A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services, rather than serving to distinguish them from the goods and services of others. Remember, trademarks are source identifiers.

Importantly, if the USPTO determines that a mark is merely descriptive, then it is not registerable or protectable unless it acquires distinctiveness. Therefore, descriptive marks are considered weak until they have acquired distinctiveness through extensive use in commerce, typically over a period of five years or more. A mark is considered to have acquired distinctiveness (or "secondary meaning") once the public recognizes the mark and associates it with the products or services as coming from one source. Mrs. Fields' Cookies for cookies and baked goods and Creamy for yogurt are examples of descriptive marks.

Small business owners frequently choose descriptive marks for their goods and/or services believing that descriptive marks reduce the need for expensive consumer education and advertising because consumers can immediately identify the product or service being offered directly from the mark itself. While this may be sound marketing advice, this approach often leads to very weak marks that cannot be easily protected. Ultimately, the adoption of a descriptive mark may end up costing more in the long run due to the high costs associated with efforts to monitor and enforce the mark, or because it may become legally necessary to completely rebrand and select a new mark.

Where to begin? A good first step is the trademark basics page on the USPTO site. 

Published on: Jun 17, 2019
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