BETTER BUSINESS THROUGH TRADEMARKS
by Richard Hanes and Tim Schutz

Shakespeare’s Hamlet proclaimed, “The play's the thing wherein I catch the conscience of the King.” Today’s electronic world of radio, television and Internet requires more than a play to captivate the King, or the consuming public—it takes Image! Examples are as close as the TV. You can’t view a sporting event without being visually deluged with the ubiquitous Nike “Swoosh.” The “Golden Arches” are pervasive in the industrial world. It would be difficult to find someone over three years old that doesn’t know “Kleenex” or “Scotch” tape or “Nintendo.” Today, the consuming public’s conscience is captured through the use of trademarks, a marketing tool of unlimited power!

If it is true that we live by symbols, it is no less true that we purchase goods by them. A trademark is a merchandising short-cut which induces a purchaser to select what he wants, or what he has been led to believe he wants. The owner of a trademark exploits this human propensity by making every effort to saturate the market with the drawing power of a congenial symbol. Whatever the means employed, the aim is the same—to convey through the trademark, in the minds of potential customers, the desirability of the commodity upon which it appears. Once that goal is attained, the trademark owner has something of great value.

A trademark works in three ways: it distinguishes the owner’s goods or services from those of a competitor; it serves as a guarantee of consistency of quality; and it helps to advertise and sell products and services. Trademarks come in a myriad of potential shapes and styles and must, therefore, be chosen carefully if the intended result is to be achieved. What sort of mark would appeal to your type of customer on the kind of merchandise you sell? What media will you use in promoting your product or service? Will the mark reproduce well on TV? Is the trademark to be used on more than one product? If foreign commerce is a potential, will the mark present well in a foreign country? In selecting a trademark that someday may be a substantial part of the value of your business, there is no substitute for intelligent and conscientious planning.

The trademark which is selected should be a good salesperson. It should be a congenial symbol with sufficient drawing power to persuade the customer of the desirability of the product on which it appears or the service it represents. If the chosen mark is a coined word like “Kodak” or “Xerox,” the selling power of the mark must come from the advertising put behind it and the reputation for quality which the product acquires over the course of time. It may have a striking appearance or sound, but at the start it is merely an eye-catcher without a message, a shout without a sentence. Some believe that a trademark should also function as a compressed advertisement; it should say something to create a favorable connotation or suggestion. “Life Savers” for candy, and “Seventeen” for a fashion magazine for young girls are examples. Some marks suggest a positive characteristic of the product or a benefit to be derived from its use. Others might be said to have “class appeal.” Perhaps a man drinking “Lord Calvert” whiskey may feel some connection with “The Man of Distinction.” Such marks have a head start over the coined meaningless marks.

The fact that over 800,000 trademarks are registered in the United States Patent and Trademark Office taxes one’s originality and imagination in choosing a mark that is appropriate, yet different enough not to be considered confusingly similar with another’s mark. The test is not an easy one to apply. In considering registerability, the Trademark Office employs several tests. The first is similarity of appearance between the applicant’s mark and those already registered. Phonetic similarity is considered. Connotation and meaning is very significant. For example, “Tornado” for wire fencing was held to be confusingly similar to “Cyclone” for a similar product. In the context of trademark infringement litigation the courts have looked to these, but also to additional tests: strength of the mark (whether it is fanciful, arbitrary or suggestive—descriptive marks are considered weak); similarity of the goods; the likelihood that the original owner will bridge the gap and enter the newcomer’s market; actual instances of consumer confusion; the newcomer’s good faith in adopting the mark; quality of the competing goods; and sophistication of the purchasers of the products and how the purchase is made (impulse, as opposed to long consideration).

In addition to taking into account the standards used by the Trademark Office and the courts in evaluating marks, it is helpful, when analyzing choices, to consider the different categories of trademarks. First, a trade name should not be confused with a trademark. The former relates to a business and is synonymous with the company name. A trademark, on the other hand, relates to goods and is synonymous with the so-called brand name. Trade names can also serve as trademarks and, as such, fall under the general heading of house marks. Familiar examples are “General Electric,” “Johnson and Johnson,” “DuPont” and “Hewlett Packard.” All of their products carry the same trademark. Others, however, chose to use separate marks for each product. Notwithstanding Kimberly Clark’s world wide reputation for “Kleenex,” the company chose “Delsey” for its toilet paper. “Vaseline” has long been used to signify a petroleum product, but it probably would be considered unsuited for vitamins or toothpaste. “Frigidaire” was extended from refrigerators to stoves and “Hotpoint,” reversing the field, was extended from stoves to refrigerators.

The fanciful, meaningless or coined name marks are considered the “strongest” type of mark, but they take time and money to develop. In addition to “Xerox” and similar coined words, there are fanciful common English language words, like “Camel” for cigarettes and “Shell” for gasoline and numbers, like “66” or “407.” Mythological characters have produced many trademarks, such as “Venus” for pencils. Picture marks, which began with such familiar images as the “White Owl” for cigars and Morton Salt’s “Umbrella Girl,” have perfused into the countless graphic symbols with which we are inundated daily.

Suggestive marks may be the most fertile category for finding a product image, although they are low on the strength scale. These marks are likely to be more appealing to the customer, more easily remembered and therefore easier to promote. This type of mark is not descriptive of the product and enjoys the broad legal protection afforded the meaningless trademark while also catering to the desire of the marketing staff for a connotation or significance that drives sales. The challenge of selecting a mark from this category is to insure that the selected trademark is suggestive and is not descriptive, for words or symbols which are descriptive of the product cannot be enforceable trademarks or be registered because they are open for all to use. “Coppertone” is an excellent example of a suggestive mark. “Talon” for zippers suggests strength in gripping, while “Swan” soap brings to mind delicate whiteness of water. “Halo” for shampoo conveys an impression of soft highlights in the hair.

Whether a mark will be considered descriptive of the goods to which it relates is not clear cut. Ready-Lite for flashlights obviously would be descriptive. But the following marks have also been rejected on the same basis: “Russet Fries” for a potato mixture for french frying; “Apricot” for a doll whose heavily touted feature was an apricot scent; “Bundt” for a ring cake mix; and “Superope” for long lasting wire rope. Illustrating the sometimes fine line between suggestive and descriptive marks, the following marks have been adjudged not descriptive-only suggestive: “Hay Dolly” for self loading trailers for hauling hay bales; and “Sensormat” for apparatus for detecting the restlessness or absence of a patient in bed

The selection of any trademark involves risk. For example, some other company may beat you to the punch by using the same or a similar mark before you did on a kind of goods that the public would think originated with you. There is a risk that the mark could be held to be descriptive of the goods. For new products, a valid mark might later become invalid because it has become generic of the product. DuPont’s Cellophane and nylon, Bayer’s Asprin ,and the words escalator, linoleum and corn flakes were once trademarks, but fell into the public domain because after the patents expired and the products could be made by anyone, there was nothing else to call them.

In choosing a trademark other guidelines are of assistance. Brevity is key. The trend is to employ short marks that are easy to say, to remember and to display. “Caterpillar” has been shortened to “Cat”; “Pepsi-Cola” is “Pepsi”; and “Bud” is the familiar moniker for “Budweiser.” A mark should be easy to remember. A good trademark should be easily readable and speakable. Having to promote a trademark by adding a phonetic spelling, e.g. “Campho-Phenique” (Cam-fo-fin-eek) adds to the promotional burden. The chosen mark should be adaptable to any media. The visual impact on TV or on the shelves is important. A mark with unpleasant connotations to some aspect of the marketplace would certainly detract from the value of the mark and could be counterproductive. For example, “Yankee Clipper” alarm clocks did not sell well in the south. However, when the name was changed to “Dixie Bell” sales soared. Knowledge of your market and how a chosen mark will be perceived by your diverse consumers is the key. The mark should be suitable for export, that is it should not have any unfortunate meaning in a foreign language and should be pronouncable by foreigners. And, if possible, the mark should lend itself to pictorialization. Certain it is that “Four Roses” as a trademark for whiskey will be more easily remembered by the picture of the roses in the advertising and the point of sale materials.

Whatever the choices, it is imperative to have a thorough search made before the mark is adopted or used, in order to discover whether the investment you are about to make in the mark by way of advertising and promotion will be thwarted by a cease and desist letter from someone claiming trademark infringement. An appropriate search will also go far to determine whether the Trademark Office will consider the mark registerable, should you decide to seek the additional benefits of registering your trademark with the United States Patent and Trademark Office.

In today’s sound-bite world the source and quality of your product or service are frequently successfully conveyed only to those with extra-sensory perception. Accordingly, now, more than ever, a well developed intellectual property strategy, including the proper selection, development, use, registration and protection of a trademark or service mark is indispensable.

This website is not intended to constitute legal advice and may not reflect the most current legal developments. The information contained in this website is provided only as general information. By posting and/or maintaining this website and its contents, Hanes & Schutz, LLC does not intend to solicit legal business from clients located in states or jurisdictions where Hanes & Schutz, LLC or its individual attorneys are not licensed or authorized to practice law.