The Art Of Trademarking

Posted March 14, 2017 by

For a Company on the verge of launching a new product or service, filing a trademark is as nerve racking as it is exciting. Used to represent a Company and/or its products and services, a trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods or services of one party from those of others.

The process of registering a trademark begins with a search of relevant databases for identical or phonetically similar trademarks in relevant international trademark classes. If an identical or similar trademark is uncovered during a legal search, the conflict could be grounds for trademark infringement and may result in trademark application refusal by the trademark office and/or opposition by the owning party due to likelihood of confusion.

A likelihood of confusion is considered to exist when both the marks are similar, and the goods and/or services of the parties are related such that consumers would mistakenly believe they come from the same source. This likelihood can extend to more than just the obvious, including sound, appearance, and commercial impression, none of which need to be explicitly identical to another mark to cause a conflict. Usually, if two like marks are used on different or unrelated goods or services, then having similar, or even identical, names is possible.

To give you an idea of how specific trademark infringement can get, lets look at two current examples:

Marvel & DC Comics

In one of the stranger trademark conflicts, comic book titans Marvel and DC both currently have a co-existence agreement allowing both equal trademark rights to the word “superhero.” In what could easily be seen as “trademark bullying,” both companies aggressively attack other comic book publishers who attempt to use the mark, and so far, there has been no real opposition to their joint ownership.

Starbucks v. Freddoccino

In January of last year, Starbucks filed a lawsuit against the parent Company of New York’s Coffee Culture Café because of their new drink, the “Freddoccino.” Starbucks alleged that the structure of the name, along with its appearance, is similar enough to their trademarked drink “Frappuccino” that it could cause “confusion in the marketplace” and diminish “Starbuck’s Brand equity.” The verdict is still currently pending.

Now, these examples may be slightly out of the norm, but they nonetheless illustrate the importance of a strong understanding of trademark prior to any creative endeavor. This is especially critical during the all-important naming of a new product or service.

Naming can come in many different forms and functions, each of which effect a variety of aspects of the overall Brand. Names that are empty vessel – made-up names and/or names that are real words but have little to nothing to do with the product they are describing – are by their nature easier to trademark, and avoiding obvious like names makes the trademark process relatively simple. These kinds of names, however, require a strong investment in marketing to ensure the consumer can associate the name with the product or service. On the other side, names that are more descriptive give the consumer a clear understanding of the Brand, but are much harder to enforce and register as they are common terms used by many others and competition for them is much more dramatic.

Fully understanding trademarking, specifically names, and leveraging it to strategically align with creative direction is the difference between a successful naming project and one that falls short, in either creativity or ownability.


Branding | Naming | Trademark

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