Accuchex Blog

The In-N-Outs of Brand Protection

Posted by Mark A. Steiner on Apr 2, 2018 10:30:00 AM

Kodak, Apple, or Frosty Treats? The In-N-Outs of Brand Protection

[This blog is a guest blog written by Mark Steiner to help educate the Accuchex readers on the importance of branding. You can find part one of the mini-series here.]

branding-appleSuccessful brands don't just establish themselves on their own. Building a successful brand typically takes many years of product development, marketing, and public relations, not to mention the related expenses that go along with those efforts.

With all of the hard work that goes into building a brand, it’s important to take the legal steps necessary to ensure your brand is protected, which means registering it with the United States Patent and Trade Office.

The initial step to qualify for a registered trademark is simply to affirm that you intend to use your trademark “in commerce,” which typically means across state lines. You have a window of about 3 to 5 years from the time you file an application to actually use your trademark for your products or services, so there’s no harm in filing early. In fact, it’s highly recommended.

When your trademark is registered with the US Patent and Trademark Office, you’ve created legal protection at the federal level that

  • You are the owner

  • The trademark is valid

  • The trademark is enforceable in federal court

  • You can record the registered trademark with U.S. Customs

  • You can register with the Trademark Clearinghouse to be notified if others register a domain name incorporating your trademark and give

  • You can register your trademark in new, top level domains before they are released to the general public.

While each state has its own registration system, and there are occasionally reasons why a business may choose not to register federally, if you can do so, I strongly recommend registering your trademark at the federal level in order to garner national rights and the advantages listed above.

employee handbook guide

The best trademarks are distinctive and protectable.

As I explained in my previous blog, a trademark attorney can help you determine whether your chosen brand name, business name, tagline, or slogan is distinctive and protectable. But even if the name you’ve chosen isn’t highly distinctive, the attorney can help you assess the ease or difficulty of registering it. The degree of difficulty has to do with the type of name you’ve chosen, as some types are much easier to register than others.

There are trademarks and then there are stronger trademarks. Some are strong and give you a broad scope of protection; some are weak and the range of protection can be quite narrow. The law categorizes trademarks on a spectrum of distinctiveness. Inherently distinctive marks have the broadest trademark protection, so the more distinctive a name, the greater its potential for legal protection. The different types of names are ranked below from the most to least distinctive.

#1: Fanciful and Arbitrary

Fanciful brand names have no real meaning or direct association with the product, and didn’t previously exist. They are coined terms. Examples of fanciful names are Xerox, Clorox, Exxon, Kodak, or Purina. Those names were crafted either out of the blue or based on a combination of ideas (Xerox was actually constructed from a real Greek root (xer-, meaning “dry,” for the dry toner used in early copiers), but in any case, the names were created specifically for the company and their products. Since it’s unlikely anyone else would just happen choose that name for their business or product, it’s clearly distinctive and protectable.

Arbitrary brand names might be words that already exist but are used outside of their standard meaning. No one would necessarily associate, for example, “Apple” with computer products, “Leapfrog” with kids’ educational toys, “Ivory” with soap, or “Old Crow” with whiskey. Arbitrary brand names offer a high level of distinction because of the lack of immediate association between the name and the product.

#2: Suggestive

A suggestive brand name offers only an inference to the product or company. “Copper Tone” suntan oil, for example, might suggest a type of quality or result, while “Rapid -Shave” shaving cream might offer the concept that one can shave quickly. If you’re willing to take a stretch, a “Rain Bird” irrigation sprinkler system could suggest that water is sprayed…maybe. Better examples might be “Orange Crush” for an orange drink or “Spray ‘N Vac” for an aerosol rug cleaner. In any case, although these aren’t at the strength of a fanciful or arbitrary mark, they can still be registered.

#3: Descriptive

Offering the consumer the clearest sense of what the product is all about, descriptive names are also the most difficult to register. Marketers like to be descriptive in naming a product or service, but legal protection for such brands becomes much more challenging. “Coastal Winery” for wine made on a coast, “Frosty Treats” for frozen desserts and ice cream, “Oatnut” for bread containing oats and nuts, or “Patent & Trademark Services Inc.” for legal services are just a few examples. They’re often easier to market, since the connection between the name and the product is obvious, but from a legal standpoint, they can be problematic. Many of these types of names were chosen early in the history of the internet, because businesses wanted to make themselves as easy as possible to find.

Of course, there is the caveat…

Which is that brand names that may start out as being merely descriptive can become distinctive over time. The law recognizes that through long term use – often more than 5 years but sometimes less—a name can become distinctive based upon extensive sales, promotion, or marketing. So don’t panic if you haven’t registered your “Pizza Parlor” business name yet. I might still be able to help.

The final category of brand names doesn’t even get a ranking, because they just aren’t protectable -- nothing prevents your competitors from choosing the same or similar name. These are generic terms, like “Cat Dinner,” or “Keyboard.” Obviously, some businesses choose these names anyway, and if you have a lot of time and a big budget to fight companies with similarly generic or descriptive brands, go right ahead with that name of yours. If not, you might want to consider something a bit more creative.

If you’re in need of professional advice regarding a brand name or trademark, contact me at

Mark A. Steiner practices in the area of intellectual property law, with a focus on trademark and copyright law. Mr. Steiner offers clients a strong combination of trial experience, counseling, enforcement, procurement and licensing expertise in matters concerning trademarks, trade identity, Internet domain names, copyrights, trade secrets and unfair competition. He has represented companies ranging in size from start-ups to Fortune 500 in a wide variety of industries, including e-commerce, computer hardware and software, networking, retail, architectural and engineering-design services, personal-care products, sporting goods, clothing, toys and games, food and beverage, and hotels and restaurants. He serves as intellectual property counsel to companies at various stages of development, from inception to maturity. Mr. Steiner regularly assists clients in the management and enforcement of domestic and international trademark portfolios.

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