Choosing a Trade-Mark (Part 2)

November 19th, 2011

What makes a good trade-mark?

If you were to sneeze, would you reach for a KLEENEX?  Chances are that you may not actually be reaching for a KLEENEX but in fact just a regular tissue, perhaps from another brand, like SCOTTIES tissues or WHITE SWAN tissues.  What about looking something up on the Internet – would you GOOGLE a term, regardless of whether you actually used the GOOGLE search engine?  Or has anyone ever asked you to XEROX that page in a book, regardless that the photo copier is a CANON brand photocopier?

Last post we discussed a purely descriptive trade-mark, and I discussed that while it may be good for marketing reasons, it doesn’t make a strong, defensible trade-mark.

What happens with other trade-marks, like coined words?

“Coined terms” are made-up words that have absolutely no connotation to the qualities of the product.  With the slight exception that GOOGLE may in fact imply that you receive a google results (a one followed by one hundred zeroes), these terms are largely made up.  From a marketing perspective, they don’t immediately link the name to a type of product, so they would require much more effort to establish in the marketplace.  However, from a trade-mark perspective, they are very unique and very distinctive.

Because they are so unique, each of these marks would afford a high degree of defense.  Anyone even attempting to come close to it, say a search engine called GAAGLE, or a tissue called KLOONEX, would be challenged on the grounds of instant confusion, and the intent would likely be clear – that the owner of the applicant’s trade-mark is trying to appropriate the goodwill of the original.

However…………what’s wrong with calling all tissues KLEENEX, and all searches online GOOGLE?  Because if that happens, these trade-marks will no longer be solely identified with the wares and services they were originally linked to, and they will lose their defensibility.  If that were to happen, and someone were to attempt to register a trade-mark for tissue under KLOONEX, the KLEENEX folks may not be able to defend adequately, as their mark has lost its power.

There are two sides to this coin and it is very important to use any trade-mark as it is intended or else it will lose that defensive power.  Check out my post on proper usage.

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