Keep What’s Yours: Choosing Strong Brands for Strong Protection

August 18, 2021

(originally published at https://startupcpg.com/spotlight/f/keep-whats-yours-choosing-strong-brands-for-strong-protection)

Suzann Moskowitz is the owner of a boutique law practice, The Moskowitz Firm, focused on brand protection, copyright, and related technology and licensing issues. For nearly two decades, Suzann has worked closely with creative entrepreneurs, technology start-ups, foodie founders, and companies large and small to protect their valuable intellectual property and to navigate evolving legal landscapes. 

The first part of this series introduced the fictitious plant-based brand, ChickTwin, its founders, the “CT Duo,” and their quest to understand the basics of trademark protection. Read it here. In this piece, we cover how to choose a strong brand and what it means to select a name that is sufficiently “distinctive.”

The Duo was initially set on the name FAKE CHICKEN and were displeased when I pointed out that it’s a “weak” mark.  As trademark counsel, I wasn’t imposing my personal taste here — “weak” is a term of art used by the United States Patent and Trademark Office (“USPTO”) to describe non-distinctive marks. The policy rationale is clear: trademarks are intended to distinguish a unique brand, not to merely describe products generically.  

Even a silly spelling like CHICK’N — the phonetic equivalent of a generic word — is still generic and not protectable. Concerned about the marketing investment they already made, the Duo insists on FAKE CHICK’N CO. Though it’s still a weak mark, the change elevates it from “generic” to “descriptive,” a change which (as shown below) increases the Duo’s ability to protect and defend the brand.

How does the USPTO Decide what Makes the Cut?

The process is the same for all USPTO trademark applicants — Examiners conduct a search of third-party filings to identify any likelihood of consumer confusion, but at the same time, they screen out applications that simply are not creative enough using a rubric along the following lines, where RED is unregistrable, YELLOW entails limited protection, and GREEN is distinctive or strong enough to be registrable:

1. Generic: Generic marks are the common or dictionary name for the goods or services. Generic words don’t function as trademarks and thus are not entitled to any protection, and that seems only fair. (Otherwise, a single company could monopolize “Chicken Nuggets,” blocking others from use.)

2. Descriptive: This includes marks that describe a characteristic, ingredient, feature, quality, or use of the relevant goods or services. Besides literal descriptors like “fake,” city names, surnames, laudatory terms (like “best”), and translations run the risk of refusal on the Principal Register, as described more fully below.

3. Suggestive: This category includes marks that require perception or thought to reach a determination as to the nature of those goods. Unlike descriptive marks, brands like UNCLE CLUCKER require a bit more imagination in order to connect it with a chicken product.

4. Arbitrary: When common words are used in incongruous ways, it is considered arbitrary and falls into a safe green zone on the continuum. (Think Apple for computers.)  

5. Coined: Such fanciful marks are nonsense words along the lines of Pepsi or Hulu, invented to function as a trademark. 

Why is Distinctive Better than Descriptive?

While there’s no prohibition on using a descriptive mark, it makes a brand ineligible for the full benefits and exclusivity of protection on USPTO’s Principal Register, even if they could claim a spot on the USPTO’s “B-List”: The Supplemental Register. Descriptive marks are entitled to a position on this lower-tier register until they develop “secondary meaning” — the idea that over time, even a weak mark eventually starts to make an impression on people (think Best Buy). FAKE CHICK’N CO. might eventually be approved for full registration on the Principal Register, but it generally takes five years of sales (or a rapid rise to fame). 

Until then, the Supplemental Register still provides a certificate suitable for framing, the right to use the ® symbol, appearance in search results, and the ability to bring suit. But the biggest downside is the inherent admission that the entire mark is weak, which makes it much harder to claim exclusive rights against other parties. So, if FAKER CHICK showed up in the same store’s freezer, the Duo could bang their fists, wave the certificate, and assert their rights but might have a tough time getting a satisfactory remedy based on Supplemental registration.

As the Duo are not feeling great about having a descriptive mark, they ponder CHICK’N FAKEY. Because CHICK’N is considered weak, the USPTO will require a “disclaimer” of the word — an explicit acknowledgment that no rights are being asserted in that word standing alone, but when used together with the more creative word. With a registration for CHICK’N FAKEY, the Duo would only be protected against uses confusingly similar to “FAKEY” — not “CHICK”N.” But protected with a registered mark, nonetheless.

Does a Distinctive Name Guarantee a Registered Trademark?

USPTO applications are reviewed by human beings, so examination is inconsistent and difficult to predict. But it’s clear that in the last few years, descriptiveness refusals have become more common, so companies are well advised to seek out distinctive marks early on.

It is important to note that even the most creative marks can be refused for other reasons including:

  • Too similar to another mark with prior rights, e.g., FAKE CHICK’N CO vs. FAKER CHICK
  • Deceptive, e.g., calling a conventional product ORGANIC-CHIC
  • Incapable of functioning as a brand, i.e., a common saying like GO VEGAN

As such, a professional risk-assessment search is always recommended before filing.

How can we Bridge the Legal/Marketing Divide? 

Not surprisingly, it can be a challenge to convince marketing departments (who want brands to communicate a message about the product, i.e., to describe it) of the benefits of choosing marks in the green zone.  It may be helpful to communicate the anticipated burden (including costs and delays) involved in responding to USPTO refusals for brands in the red/orange zone. Common compromise positions:

  • A mark with strong AND weak components, with a disclaimer – like CHICK’N FAKEY® where “chicken” is disclaimed  
  • A strong mark with an unregistered descriptive full identifier – like UNCLE CLUCKER® meatless nuggets

The Duo decided to go for a more protectable brand, so they revisited the drawing board, landing on ChickTwin, a strong coined term. They moved on to a risk assessment search, found no clear third-party issues, and went on to file and register at the USPTO. 

Stay tuned for more lessons from the ChickTwin Duo.

This article is provided for informational purposes only, and should not be construed as legal advice.