Consumers see the trademarks of their favorite companies everyday. From Apple to Xerox, distinctive trademarks guide consumers in their buying decisions and give companies a tool that helps distinguish them from their competitors.
These two facts bring us to what is perhaps the most important legal factor to consider when developing and selecting a trademark: The primacy of avoiding confusion.
1. The Confusion Test
For the protection of the consumer and your company, whenever there is a case of possible trademark infringement between two companies, the law decides if the two trademarks are “confusingly similar” or whether there is the “likelihood of confusion” between the two trademarks. The issue is examined somewhat from the consumer’s point of view. Some of the points that will be considered include:
- Whether the two trademark holders compete with one another.
- Whether the two companies market their products through the same channels.
- Whether the company alleged to infringe on the trademark is doing it to deceive consumers.
- Whether the products from both sides are so closely related that the business of the first company to have the trademark will likely expand into the business are of the second company to use the trademark.
If there are potential Trademark infringement issues or concerns, there are attorneys that specialize in this field like Glenn Peterson Attorney.
Much of the law around these issue stems back to a 1961 case, Polaroid Corp v. Polarad Electric Corp. Other points to consider are the “strength” of the mark and the similarity of the marks.
When the trademark has taken on a “secondary” meaning it is one way to show that it has strength. For example, talking about computers, a consumer might say, “I bought an Apple for the family.” The trademark Apple has taken on a secondary meaning apart from the traditional meaning of the word “apple.”
Far less strong are descriptive terms. The company Maid in America was unsuccessful in a trademark suit because with its descriptive name, it was unable to show that its trademark had taken on a secondary meaning.
Here’s a classification of trademark categories in descending order of their strength:
- Fanciful marks. Invented terms.
- Arbitrary marks. Real words repurposed, like Apple Computer.
- Suggestive marks. Words that suggest something about the product. Blu-ray and Coppertone are examples.
- Descriptive marks. Dictionary words that describe the product, like Bookland.
- Generic terms. Generic terms cannot be trademarked.
2. Be prepared to defend your trademark
Look at the information above from both sides. If you’re planning to establish a trademark, be certain that what you select does not infringe on another company. When you are satisfied that it is sufficiently strong and unique, then you must be prepared to defend it from others who would infringe upon it.
If you do not protect your trademark, courts will let it enter the common vernacular. For example, if we were to not properly capitalize Kleenex Brand tissue in this post, there’s a good chance that eventually we would receive a polite note from Kimberly-Clark Worldwide Inc. lawyers reminding us that Kleenex is their trademark and not a generic term for any old tissue paper.
Our language today is full of words that were at one time distinctive marks for specific products. Margarine, linoleum, videotape and aspirin are just a few examples.
3. The attributes of a great trademark
Now that we know what not to do and the importance of defending our trademark, perhaps the biggest hurdle lies ahead: Selecting a trademark that is worth defending. In other words, once the decision is made to establish a trademark, it needs to be of enough value to your company to warrant the work you’re going to have to put into it.
Along with being unique, it needs to hit some of these marks:
- Connect with customers.
- Somehow suggest your product of service.
- Be creative.
- Get people thinking.
- Be simple enough to remember.
Not all great trademarks nail all of these attributes. Some excel tremendously in one or two categories. Apple and Xerox originally suggested nothing about the products associated with those trademarks. In fact, a measure of a great product is one that reads meaning back into its trademark.
We might call one like that, a Cadillac of trademarks.