Trademarks: Don’t Describe. . . . Suggest

Trademarks:  Don’t Describe. . . . Suggest

By: Natalie A. Remien

Businesses that do not have a marketing budget the size of McDonald’s (the rest of us) often try to develop brands for their products that are too descriptive to be protected.  The strongest of brands, and thus trademarks, are those that are inherently distinctive, meaning that the brand does not describe any quality of the product or service it symbolizes (think Apple for computers).  However, the cost of connecting inherently distinctive marks with your good or service is extremely expensive as it takes massive, repetitive and consistent marketing efforts over a long period of time to develop such goodwill.  While trademarks that are merely descriptive typically cannot be registered with the USPTO, companies need to choose a name that is suggestive.  Suggestive marks suggest something about an ingredient or quality of the good or service provided, but some imagination is needed to know what the product or service is.  Suggestive marks are protectable and can be registered (assuming they fulfill all the other requirements) on the USPTO principal trademark register.  Therefore, while it may be easier to come up with descriptive names for a business or product or service, businesses are well advised to spend the extra time to conceive of a brand name that is suggestive of the product or service.

If you have any questions in this area, please contact:

Natalie A. Remien at:

nremien@lgattorneys.com or 312-368-0100.

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