Protecting Weak Online Trademarks

A trademark is a word, name, sound, symbol, device or combination thereof used consistently by a company to identify its goods and distinguish them from those manufactured or sold by others. Examples include Nike and Microsoft (words or names), the pink associated with Owens Corning insulation (color), and the NBC chimes (sound). Other trademarks include the Coca-Cola bottle (uniquely shaped container) and taglines, including “The real thing” of Coca-Cola, “Just do it” of Nike and State Farm's “Like a good neighbor.”

To register your trademark with the USPTO and receive the advantages that a federally registered trademark receives, the mark must pass the USPTO's examination. If you are successful, federal trademark registration provides you with a number of legal benefits, including: 1) evidence in court that you own the trademark, that the trademark is valid and that you have the right to use it; 2) constructive notice of your claim of ownership of the registered trademark and nationwide rights in the trademark; 3) the right to use the ' symbol whenever you choose to do so; and 4) the power of the USPTO to reject later-filed trademark applications that are considered confusingly similar to your federally registered trademark. Registering your trademark inhibits competitors from using marks too similar to your own.

Trademarks can be registered on what is called the USPTO's Principal Register, or on the lesser-used Supplemental Register. The Principal Register is reserved for trademarks that are considered to be most distinctive on their own and also includes those that have become demonstrably distinctive over time as a result of strong advertising and consumer recognition.

Trademarks on the Supplemental Register are typically less distinctive descriptive terms, surnames, geographic terms and marks used with visual elements (known as “trade dress”). As with the Principal Register, the Supplemental Register gives you the right to use the ' symbol as a defense against competitors, and the registration can be cited by USPTO examiners against Supplemental and Principal applications filed later by competitors.

Unlike the Principal Register, however, the Supplemental Register offers no presumption that your mark is valid, that you own it or that you have the exclusive right to use it. In addition, registration on the Supplemental Register cannot be used to block the importation of counterfeits. If your company faces competitive threats from overseas, a Principal Register trademark is best, because it will empower the U.S. Customs and Border Protection department to block counterfeit imports at their U.S. entry point.

Types of Trademarks

Among trademark law practitioners, prospective trademarks fall within one of five categories, from strongest (easiest to protect) to weakest (most difficult to protect). These trademark considerations apply in both the offline and online worlds.

The fanciful trademark. Among these categories, the fanciful or coined trademark is the easiest to protect. Fanciful trademarks are made-up words that are not found in any dictionary, but are created solely to serve as trademarks. Examples include Kodak' for cameras, Exxon' for gasoline and Xerox' for copy machines. Non-word trademarks, whether letters, numbers, designs or logos, may also be considered fanciful.

Fanciful trademarks are appealing to trademark attorneys because they are very distinctive. From a marketing point of view, however, fanciful trademarks present a challenge because they lack inherent meaning. Building meaning and strong brand awareness among consumers may require substantial advertising and marketing investments over time.

The arbitrary trademark. The arbitrary trademark is a normal word with a definition that has nothing to do with the way it is used as a trademark. Arbitrary trademarks offer strong protection and, while not as strong as fanciful or coined trademarks, they are strongly favored by courts. Examples include Apple' for computers and Camel' for cigarettes.

The suggestive trademark. The third-best category for trademarks is the suggestive trademark. Suggestive trademarks hint at, but do not directly describe, characteristics or qualities of the products with which they are associated. Suggestive trademarks are protectable, but more difficult to defend than fanciful or arbitrary trademarks. Examples of suggestive trademarks include Jaguar, chosen because the name suggests speed, strength and elegance ' all good terms to associate with a car. Another is Dove, which suggests soft and gentle. Another good one is Coppertone, which suggests the possible results of tanning while not being strictly descriptive.

The descriptive trademark. Problems arise when you select a trademark from the next category, the descriptive trademark. These describe rather than suggest the characteristics or qualities of the products or services in connection with which they are used. They are generally not protectable as trademarks unless it can be proven in a court of law that they actually identify one particular brand as opposed to all brands in general. Rare is the descriptive trademark so established that consumers perceive the trademark as equivalent to the product itself ' Kentucky Fried Chicken is among the exceptions.

The generic term. The fifth category, the generic term, is not really a trademark at all. Generic terms cannot function as trademarks or be registered with the USPTO, because they have become synonymous with the common name of the relevant product or service. Courts generally hold that all producers should be allowed to use a generic term to refer to their products. For example, aspirin, butterscotch and escalators initially were trademarks when only one company made each of these products. Lacking aggressive brand protection efforts, each of these marks eventually became known as the product category rather than as a specific product name.

The Challenge of the Descriptive Mark

A descriptive trademark is highly desirable from a marketing point of view, but difficult to obtain. As a general rule, the more closely the mark describes the goods or services, the weaker or less distinguishable it is. The challenge for marketers is to strike a balance between the convenience of a highly descriptive mark and the difficulty of maintaining strong legal protection for such a mark.

The USPTO makes it difficult to register descriptive marks because it seeks to prevent the owner of a mark from inhibiting competition in the sale of particular goods or services and to avoid the possibility of costly infringement suits brought by the registrant. Thus, businesses and competitors have the freedom to use common descriptive language when merely describing their own goods or services to the public in advertising and marketing materials.

Descriptive trademarks can be successfully registered if they acquire secondary meaning, where the mark transcends the literal meaning of its words and is associated with a particular source. Kentucky Fried Chicken, again, initially was considered by the USPTO to be too descriptive to warrant trademark registration. Eventually, the brand achieved secondary meaning through consumer recognition and became a registered trademark.

If you have used a trademark for five years or more, the USPTO might presume that the trademark has acquired distinctiveness. However, the USPTO appears to be moving away from this five-year rule ' the presumption of secondary meaning rule ' and is increasingly requiring companies to prove such a secondary meaning, even if they have used the mark in question for far more than five years. In a recent case, the applicant had used its mark for more than 11 years, but the USPTO examiner nonetheless refused to accept length of use as sufficient evidence to support secondary meaning.

The Descriptive Dilemma: Nine Kinds of Evidence

If you seek to register a descriptive mark on the USPTO's Principal Register, be prepared to provide evidence that your term has acquired secondary meaning in the minds of consumers and is distinct in the marketplace ' even if your mark has been in use for years. The USPTO will likely expect one or more of the nine primary kinds of evidence to determine whether your trademark deserves a spot on the Principal Register of trademarks.

Declarations. A declaration is a written statement about the distinctiveness of your trademark. It is an opportunity to introduce evidence to support that distinctiveness, including sales figures, advertising expenditures, consumer surveys and more. A declaration should be signed by a knowledgeable person ' an employee, a consumer, a distributor or another third party ' who can vouch for consumers' recognition of the trademark. If you enforce the trademark against a competitor, for example, you could require the competitor to sign a declaration as part of a settlement agreement.

Consumer trademark surveys. The courts often view consumer trademark surveys (as opposed to marketing surveys) as the best evidence of secondary meaning. Trademark surveys must be conducted and interpreted by a professional qualified in the eyes of the court to gauge consumer understanding.

Advertising. Your advertising is essential when trying to prove that your trademark has acquired secondary meaning. For this evidence to work, however, you must use your trademark consistently throughout your advertising and marketing communications.

It is also critical to never use your trademark as a verb or as a stand-alone noun. Proper use would be, for instance, Lego toy blocks or Amstel beer; using a Xerox copier rather than Xeroxing; or skating with Rollerblade in-line skates rather than roller-blading. If you ride the escalator while taking an aspirin, you are turning your trademark into a generic term. “Genericide” can happen to your trademark ' just as it happened to aspirin, cellophane and trampoline.

Your trademark should be prominent in your packaging and advertising, not hidden or small. Use the service mark SM or ' to indicate that you consider the mark to be your trademark even if it is not registered with the USPTO. Bear in mind that ' can be used only if your mark is a U.S. registered trademark.

Sales reports. Strong sales support the argument that the product has been successful and that consumers associate the trademark with your products. Since sales data becomes a public record if it is submitted as part of an application to the USPTO, be strategic in presenting such data. You could, for example, compare your market share to that of a competitor, or could show how sales are growing using percentages instead of actual numbers.

Photographs. Photographs can powerfully display the distinctiveness of your brand in a way that sales and advertising figures cannot. One eye-catching photograph of consumers or even a celebrity wearing promotional gear bearing the trademark, or of a launch event or event sponsorship event can transform a legal brief from a document quickly skimmed to one that demands attention as evidence that consumers recognize the mark.

Media mentions. As you launch a new brand, keep detailed records of any and all media mentions, whether in online, print or broadcast media. These unbiased third-party references will further demonstrate to the USPTO the distinctiveness of your mark.

Online visibility. The USPTO and the courts recognize that online recognition through social media is as important as awareness earned offline. Companies should track social media mentions, unique website visits, online advertising impressions, and banner advertisement click-throughs. Again, take a strategic approach to reporting this information, using graphs and charts to show growth in consumer awareness and engagement, whether in raw numbers or percentages ' whichever is more powerful.

Alternatives to Proof of Secondary Meaning

If proving secondary meaning proves too difficult, companies do have options. One is to add a distinctive term to the descriptive trademark. A second is to add a logo to the descriptive trademark or at the very least a distinctive stylization to it and then use that logo or stylization whenever you use the descriptive trademark. The Coca-Cola script, for example, is one of the most famous examples of a distinctive stylization. With a distinctive second term, logo or stylization, you may be able to register the descriptive term, even with a disclaimer, and registration alone may be enough to scare away competitors.

A third option? Be creative with your listed identification of goods or services. If you review other descriptive terms that were successfully registered with the USPTO, you might find a pattern. For example, if the term Wheelies was registered for motorized vehicles, but not for motorcycles, you could apply to register the mark for go-carts, but not for motorcycles. By excluding the goods that caused problems in the past, you give the trademark examiner a reason to approve your application.

If you successfully register a descriptive term as a trademark, competitors may nonetheless be able to use your newly created trademark in its primary descriptive sense. For example, if you tried to use healthy as a trademark for a new hamburger, a competitor might be able to advertise that its hamburgers are “healthy and wholesome” without being found guilty of infringing your trademark. Neither the USPTO nor the courts seek to grant a monopoly to a trademark owner for use of a descriptive term.

Registering your mark with the USPTO can help you protect that mark against descriptive use by others, although you may be required to add your house mark, a logo or stylization to make it distinctive if you cannot show evidence of secondary meaning. If you perceive competitor infringement that warrants a cease-and-desist letter, being able to cite a federal registration number helps discourage continued infringement.

You also need to be realistic about the scope of protection available: the more descriptive a mark, the smaller the scope of protection. Some marks are virtually unprotectable. If your mark is not generic, but nonetheless weak, assess the field of potential infringers. Are you concerned about only three major competitors and their potential use of the term, or the use of your new descriptive trademark on specific products sold in specific channels of trade? The more you can target potential problems, the easier it is to assess your chances of enforcing your mark. If numerous competitors could use your descriptive trademark, you may find it difficult to defend the mark.

In addition, add other distinctive elements to your product, such as a distinctive trade dress, a house color or other marks. By doing so, you can strengthen your cease-and-desist letter by citing other protectable aspects of your intellectual property portfolio. For example, if you use a descriptive trademark in conjunction with a distinctive color and lettering on your product packaging, and a competing product uses your descriptive trademark with similar packaging color and similar lettering, you may still stop the competitor's practice because you now have three brand elements instead of only the descriptive trademark.

Conclusion

The first step in establishing a strong trademark, rather than expending effort to protect a weak one, is to select as distinctive a mark as possible. You will find it easier to use and enforce your mark against third parties. If you have the unenviable task of trying to police a descriptive trademark, be strategic and realistic at the outset about the scope of protection that mark will enjoy.

You're launching a new computer keyboard. You'd like to call it “101-Key Keyboard.” After all, the product is a U.S. standard with 101 keys. The name conveys the benefit of the keyboard ' that it is standard ' and the concise name will fit easily into your product catalog. You plan to register the name as a trademark with the U.S. Patent & Trademark Office (USPTO) so you can enforce your rights to the name against competitors who try to use the same name.

Solid plan? Not so fast. You've created what is known as a “weak” trademark ' one that will be difficult to register as a trademark and to defend in the marketplace. Creating a brand name that is trademark-worthy and can be defended in the market requires a thoughtful strategy. The standards of the USPTO for trademark registration are nuanced, and the wrong choice of words can make it challenging to obtain a defensible registered mark.

Trademark Basics

A trademark is a word, name, sound, symbol, device or combination thereof used consistently by a company to identify its goods and distinguish them from those manufactured or sold by others. Examples include Nike and Microsoft (words or names), the pink associated with Owens Corning insulation (color), and the NBC chimes (sound). Other trademarks include the Coca-Cola bottle (uniquely shaped container) and taglines, including “The real thing” of Coca-Cola, “Just do it” of Nike and State Farm's “Like a good neighbor.”

To register your trademark with the USPTO and receive the advantages that a federally registered trademark receives, the mark must pass the USPTO's examination. If you are successful, federal trademark registration provides you with a number of legal benefits, including: 1) evidence in court that you own the trademark, that the trademark is valid and that you have the right to use it; 2) constructive notice of your claim of ownership of the registered trademark and nationwide rights in the trademark; 3) the right to use the ' symbol whenever you choose to do so; and 4) the power of the USPTO to reject later-filed trademark applications that are considered confusingly similar to your federally registered trademark. Registering your trademark inhibits competitors from using marks too similar to your own.

Trademarks can be registered on what is called the USPTO's Principal Register, or on the lesser-used Supplemental Register. The Principal Register is reserved for trademarks that are considered to be most distinctive on their own and also includes those that have become demonstrably distinctive over time as a result of strong advertising and consumer recognition.

Trademarks on the Supplemental Register are typically less distinctive descriptive terms, surnames, geographic terms and marks used with visual elements (known as “trade dress”). As with the Principal Register, the Supplemental Register gives you the right to use the ' symbol as a defense against competitors, and the registration can be cited by USPTO examiners against Supplemental and Principal applications filed later by competitors.

Unlike the Principal Register, however, the Supplemental Register offers no presumption that your mark is valid, that you own it or that you have the exclusive right to use it. In addition, registration on the Supplemental Register cannot be used to block the importation of counterfeits. If your company faces competitive threats from overseas, a Principal Register trademark is best, because it will empower the U.S. Customs and Border Protection department to block counterfeit imports at their U.S. entry point.

Types of Trademarks

Among trademark law practitioners, prospective trademarks fall within one of five categories, from strongest (easiest to protect) to weakest (most difficult to protect). These trademark considerations apply in both the offline and online worlds.

The fanciful trademark. Among these categories, the fanciful or coined trademark is the easiest to protect. Fanciful trademarks are made-up words that are not found in any dictionary, but are created solely to serve as trademarks. Examples include Kodak' for cameras, Exxon' for gasoline and Xerox' for copy machines. Non-word trademarks, whether letters, numbers, designs or logos, may also be considered fanciful.

Fanciful trademarks are appealing to trademark attorneys because they are very distinctive. From a marketing point of view, however, fanciful trademarks present a challenge because they lack inherent meaning. Building meaning and strong brand awareness among consumers may require substantial advertising and marketing investments over time.

The arbitrary trademark. The arbitrary trademark is a normal word with a definition that has nothing to do with the way it is used as a trademark. Arbitrary trademarks offer strong protection and, while not as strong as fanciful or coined trademarks, they are strongly favored by courts. Examples include Apple' for computers and Camel' for cigarettes.

The suggestive trademark. The third-best category for trademarks is the suggestive trademark. Suggestive trademarks hint at, but do not directly describe, characteristics or qualities of the products with which they are associated. Suggestive trademarks are protectable, but more difficult to defend than fanciful or arbitrary trademarks. Examples of suggestive trademarks include Jaguar, chosen because the name suggests speed, strength and elegance ' all good terms to associate with a car. Another is Dove, which suggests soft and gentle. Another good one is Coppertone, which suggests the possible results of tanning while not being strictly descriptive.

The descriptive trademark. Problems arise when you select a trademark from the next category, the descriptive trademark. These describe rather than suggest the characteristics or qualities of the products or services in connection with which they are used. They are generally not protectable as trademarks unless it can be proven in a court of law that they actually identify one particular brand as opposed to all brands in general. Rare is the descriptive trademark so established that consumers perceive the trademark as equivalent to the product itself ' Kentucky Fried Chicken is among the exceptions.

The generic term. The fifth category, the generic term, is not really a trademark at all. Generic terms cannot function as trademarks or be registered with the USPTO, because they have become synonymous with the common name of the relevant product or service. Courts generally hold that all producers should be allowed to use a generic term to refer to their products. For example, aspirin, butterscotch and escalators initially were trademarks when only one company made each of these products. Lacking aggressive brand protection efforts, each of these marks eventually became known as the product category rather than as a specific product name.

The Challenge of the Descriptive Mark

A descriptive trademark is highly desirable from a marketing point of view, but difficult to obtain. As a general rule, the more closely the mark describes the goods or services, the weaker or less distinguishable it is. The challenge for marketers is to strike a balance between the convenience of a highly descriptive mark and the difficulty of maintaining strong legal protection for such a mark.

The USPTO makes it difficult to register descriptive marks because it seeks to prevent the owner of a mark from inhibiting competition in the sale of particular goods or services and to avoid the possibility of costly infringement suits brought by the registrant. Thus, businesses and competitors have the freedom to use common descriptive language when merely describing their own goods or services to the public in advertising and marketing materials.

Descriptive trademarks can be successfully registered if they acquire secondary meaning, where the mark transcends the literal meaning of its words and is associated with a particular source. Kentucky Fried Chicken, again, initially was considered by the USPTO to be too descriptive to warrant trademark registration. Eventually, the brand achieved secondary meaning through consumer recognition and became a registered trademark.

If you have used a trademark for five years or more, the USPTO might presume that the trademark has acquired distinctiveness. However, the USPTO appears to be moving away from this five-year rule ' the presumption of secondary meaning rule ' and is increasingly requiring companies to prove such a secondary meaning, even if they have used the mark in question for far more than five years. In a recent case, the applicant had used its mark for more than 11 years, but the USPTO examiner nonetheless refused to accept length of use as sufficient evidence to support secondary meaning.

The Descriptive Dilemma: Nine Kinds of Evidence

If you seek to register a descriptive mark on the USPTO's Principal Register, be prepared to provide evidence that your term has acquired secondary meaning in the minds of consumers and is distinct in the marketplace ' even if your mark has been in use for years. The USPTO will likely expect one or more of the nine primary kinds of evidence to determine whether your trademark deserves a spot on the Principal Register of trademarks.

Declarations. A declaration is a written statement about the distinctiveness of your trademark. It is an opportunity to introduce evidence to support that distinctiveness, including sales figures, advertising expenditures, consumer surveys and more. A declaration should be signed by a knowledgeable person ' an employee, a consumer, a distributor or another third party ' who can vouch for consumers' recognition of the trademark. If you enforce the trademark against a competitor, for example, you could require the competitor to sign a declaration as part of a settlement agreement.

Consumer trademark surveys. The courts often view consumer trademark surveys (as opposed to marketing surveys) as the best evidence of secondary meaning. Trademark surveys must be conducted and interpreted by a professional qualified in the eyes of the court to gauge consumer understanding.

Advertising. Your advertising is essential when trying to prove that your trademark has acquired secondary meaning. For this evidence to work, however, you must use your trademark consistently throughout your advertising and marketing communications.

It is also critical to never use your trademark as a verb or as a stand-alone noun. Proper use would be, for instance, Lego toy blocks or Amstel beer; using a Xerox copier rather than Xeroxing; or skating with Rollerblade in-line skates rather than roller-blading. If you ride the escalator while taking an aspirin, you are turning your trademark into a generic term. “Genericide” can happen to your trademark ' just as it happened to aspirin, cellophane and trampoline.

Your trademark should be prominent in your packaging and advertising, not hidden or small. Use the service mark SM or ' to indicate that you consider the mark to be your trademark even if it is not registered with the USPTO. Bear in mind that ' can be used only if your mark is a U.S. registered trademark.

Sales reports. Strong sales support the argument that the product has been successful and that consumers associate the trademark with your products. Since sales data becomes a public record if it is submitted as part of an application to the USPTO, be strategic in presenting such data. You could, for example, compare your market share to that of a competitor, or could show how sales are growing using percentages instead of actual numbers.

Photographs. Photographs can powerfully display the distinctiveness of your brand in a way that sales and advertising figures cannot. One eye-catching photograph of consumers or even a celebrity wearing promotional gear bearing the trademark, or of a launch event or event sponsorship event can transform a legal brief from a document quickly skimmed to one that demands attention as evidence that consumers recognize the mark.

Media mentions. As you launch a new brand, keep detailed records of any and all media mentions, whether in online, print or broadcast media. These unbiased third-party references will further demonstrate to the USPTO the distinctiveness of your mark.

Online visibility. The USPTO and the courts recognize that online recognition through social media is as important as awareness earned offline. Companies should track social media mentions, unique website visits, online advertising impressions, and banner advertisement click-throughs. Again, take a strategic approach to reporting this information, using graphs and charts to show growth in consumer awareness and engagement, whether in raw numbers or percentages ' whichever is more powerful.

Alternatives to Proof of Secondary Meaning

If proving secondary meaning proves too difficult, companies do have options. One is to add a distinctive term to the descriptive trademark. A second is to add a logo to the descriptive trademark or at the very least a distinctive stylization to it and then use that logo or stylization whenever you use the descriptive trademark. The Coca-Cola script, for example, is one of the most famous examples of a distinctive stylization. With a distinctive second term, logo or stylization, you may be able to register the descriptive term, even with a disclaimer, and registration alone may be enough to scare away competitors.

A third option? Be creative with your listed identification of goods or services. If you review other descriptive terms that were successfully registered with the USPTO, you might find a pattern. For example, if the term Wheelies was registered for motorized vehicles, but not for motorcycles, you could apply to register the mark for go-carts, but not for motorcycles. By excluding the goods that caused problems in the past, you give the trademark examiner a reason to approve your application.

If you successfully register a descriptive term as a trademark, competitors may nonetheless be able to use your newly created trademark in its primary descriptive sense. For example, if you tried to use healthy as a trademark for a new hamburger, a competitor might be able to advertise that its hamburgers are “healthy and wholesome” without being found guilty of infringing your trademark. Neither the USPTO nor the courts seek to grant a monopoly to a trademark owner for use of a descriptive term.

Registering your mark with the USPTO can help you protect that mark against descriptive use by others, although you may be required to add your house mark, a logo or stylization to make it distinctive if you cannot show evidence of secondary meaning. If you perceive competitor infringement that warrants a cease-and-desist letter, being able to cite a federal registration number helps discourage continued infringement.

You also need to be realistic about the scope of protection available: the more descriptive a mark, the smaller the scope of protection. Some marks are virtually unprotectable. If your mark is not generic, but nonetheless weak, assess the field of potential infringers. Are you concerned about only three major competitors and their potential use of the term, or the use of your new descriptive trademark on specific products sold in specific channels of trade? The more you can target potential problems, the easier it is to assess your chances of enforcing your mark. If numerous competitors could use your descriptive trademark, you may find it difficult to defend the mark.

In addition, add other distinctive elements to your product, such as a distinctive trade dress, a house color or other marks. By doing so, you can strengthen your cease-and-desist letter by citing other protectable aspects of your intellectual property portfolio. For example, if you use a descriptive trademark in conjunction with a distinctive color and lettering on your product packaging, and a competing product uses your descriptive trademark with similar packaging color and similar lettering, you may still stop the competitor's practice because you now have three brand elements instead of only the descriptive trademark.

Conclusion

The first step in establishing a strong trademark, rather than expending effort to protect a weak one, is to select as distinctive a mark as possible. You will find it easier to use and enforce your mark against third parties. If you have the unenviable task of trying to police a descriptive trademark, be strategic and realistic at the outset about the scope of protection that mark will enjoy.