LEGAL ASPECTS OF SELECTING AND ADOPTING A NEW TRADEMARK.

An average consumer is probably exposed to hundreds if not thousands of brands (trademarks) on a daily basis. Just get in your car and drive a mile and you will surely see dozens of brightly colored billboards, loudly advertising all kinds of brands. When you stop at your local groceries store and step inside, many more brands will instantly bombard your senses. And the minute you decide to shop online and access the Amazon app on your iPhone, you will once again get exposed to the countless branded products offered by numerous sellers on Amazon. And, of course, Amazon and iPhone are themselves brands.

Any business that wants to launch a successful new product therefore needs a good brand to succeed. Something that stands out, differentiates you from competition and can be used to build a successful business. But what exactly qualities make for a good brand? Memorability? Of course… Ability to elicit a positive response from consumers? Sure… These and many other qualities are all important for a brand to work from the advertising and marketing perspectives. But even if you come up with a brand that resonates with consumers, that does not guarantee your brand will succeed in the long term. Your brand also needs to be strong from the legal perspective. At the very minimum, you need to make sure that your new brand (a) is legally available (meaning it does not infringe on someone else’s rights) and (b) is legally protectable (meaning you can actually enforce your trademark against others if necessary).

A. Legal Availability.

Human minds work surprisingly alike, and even if you create a trademark that you think is completely unique, there is always a chance someone else already came up with the same or similar trademark before. It is therefore paramount to conduct a thorough trademark research and analysis to determine if your new mark is legally available before launching it. It is simply not a good idea to start investing time, money, and effort into a new trademark only to risk receiving a cease-and-desist letter a few months later and having to rebrand.

To get a rough idea of whether your newly conceived trademark is legally risky, you can conduct a preliminary research yourself. Even a quick online search can provide a wealth of useful information in that regard. But the proper way to conduct a thorough research and analysis is to utilize a specialized trademark lawyer who will carefully search in all relevant federal, state and various other trademark databases and sources nationwide and will properly analyze all the risks. Many legal concepts pertaining to trademarks are extremely technical, and a non-attorney can make catastrophic errors in judgment there.

For example, a surprisingly high amount of inexperienced new business owners believe that unless their new trademark is exactly the same as someone else’s trademark then it can be used without a problem. That belief could not be further from the truth and can cause very serious legal problems down the road. Let’s use a hypothetical example to illustrate the point.

"KOOKA KOLA" is somewhat different from the famous "COCA-COLA" brand. It replaces C’s with K’s and has an extra letter "O." But if one were to start selling soft drinks under the “KOOKA KOLA” brand, they would most likely get legally hammered by the Coca-Cola Company very fast and hard.

Granted, the “KOOKA KOLA” example is somewhat far-fetched because a prudent businessperson is unlikely to ever cross such a powerful brand as COCA-COLA, but that example is nonetheless a good illustration of a key principle of current trademark laws: for infringement to occur, a trademark does not have to be the same as someone else’s mark. The trademarks only need to be visually, phonetically or otherwise similar in a way that causes reasonable consumers to be confused into mistakenly believing that the two trademarks are somehow related or represent the same source of products. Whether two trademarks are sufficiently similar in order to cause legal problems is something that is very fact dependent and must be carefully analyzed in each specific case. The importance of properly analyzing a trademark’s legal availability early in the brand development process simply cannot be overstated.

B. Legal Protectability and Trademark Strength.

In addition to being legally available, a good trademark must also be legally protectable because you obviously need to be able to stop others from imitating your brand as necessary. Legal protectability of a trademark is a very broad subject in and of itself. But speaking very generally, your trademark’s protectability will mainly depend on the following two points: (i) whether you were first to adopt and use the trademark and (ii) whether the mark is capable of being legally protected due to its inherent strengths. The first point is rather self-explanatory, so let’s discuss the second point and what exactly qualities and characteristics a trademark must possess to be strong and protectable.

Many businesses have a very natural tendency to come up with trademarks that merely describe their products and services. Trademarks like JOE’S CARWASHING SERVICE, NEW YORK PIZZA EMPORIUM, or DOWNTOWN QUALITY CLEANERS are ubiquitous and are designed to explicitly describe the underlying products or services. But while descriptive trademarks are often desirable from a marketing perspective, they usually make for very weak trademarks and can present significant challenges when it comes to enforcing them against competitors or stopping infringement.

Let’s assume your name is Joe and you operate a car wash facility, which is why you named your place JOE’S CARWASHING SERVICE. Now, imagine some other Joe opens a competing car wash across the street and he decides to also call his place JOE’S CARWASHING SERVICE. You may get angry and think that the other Joe is unfairly competing with you, but unless there are some specific circumstances indicating unfair competition, that other Joe probably did nothing wrong. Just like you chose the JOE’S CARWASHING SERVICE mark to accurately describe your services, so did he. And if you believe he is competing unfairly, proving that in court may present significant challenges. Descriptive marks are very weak and may be rather difficult to enforce against competitors.

Some words can even be so descriptive as to have no legal protection as trademarks at all. For example, the word “T-SHIRT,” would be impossible to claim as a trademark for selling actual t-shirts because that is just the universally recognized generic name of the product and anyone can freely use the word “T-SHIRT” to describe actual t-shirts.

On the other end of the trademark strength spectrum are so-called “arbitrary” and “fancy” trademarks – they do not describe the underlying products in any way whatsoever. Which is why such marks are very strong and enjoy the highest degree of legal protection. KODAK, ADIDAS, TESLA (for cars) and APPLE (for computers) are perfect examples of such trademarks.

There is also a third big category of trademarks that do not directly describe products but suggest their nature, ingredients or qualities. Those trademarks are called “suggestive.” NETFLIX (for content streaming) and NOBURST (for liquid antifreeze) would be good examples of suggestive marks. Suggestive marks are sometimes difficult to distinguish from descriptive marks but the big difference between those two categories is that suggestive marks require some thought, imagination or perception to discern a product’s nature or qualities, while descriptive marks immediately reveal that information. The level of protection of suggestive marks is relatively strong and falls somewhere between arbitrary and descriptive trademarks.

A trademark’s inherent strengths usually determine how close competitors can come to imitating the trademark. Genetic names (T-SHIRT, ICE-CREAM, MOVIE THEATER) get no legal protection as trademarks at all, and anyone can use them freely. Descriptive marks (JOE’S CAR WASH, DOWNTOWN PIZZA EMPORIUM) are usually very weak and get limited protection initially, but their level of protection may increase upon acquiring widespread success and recognition as pointing to a singular source of goods. Suggestive marks (NETFLIX, AIRBUS, KITCHENAID) are much stronger and get a fair amount of protection and will typically allow you to stop most infringement. Arbitrary and fanciful marks (KODAK, NIKE, ROBINHOOD) are the strongest and get the highest level of protection and can often be enforced against anyone whose trademark even vaguely resembles such a mark. Because a trademark’s level of protection can vary drastically depending on its inherent strengths, all the strengths or weaknesses of each new mark should be carefully evaluated before fully adopting and using that mark in commerce.

To summarize all that we discussed above, in addition to evaluating a new trademark’s advertising and marketing potential, the mark should also be carefully evaluated from a legal perspective as early as possible in the trademark selection process. The legal part of that mark’s evaluation should encompass the mark’s availability (whether the trademark conflicts with a mark already in use by others) and protectability (will you be able to successfully enforce your trademark rights against others). Failure to conduct a proper legal analysis can cause significant business and legal expenses, lost revenues, lawsuits and various other unnecessary problems down the road.