The (Legal) Story Behind the Brand Name

Aaron is absolutely right; a gifted trademark lawyer uniformly prefers for a client to adopt and use suggestive over descriptive names and marks. As I have discussed before in “A Legal Perspective on the Pros and Cons of Name Styles,” this graphic illustrates the all-important Spectrum of Distinctiveness, and explains the critical difference between these two types of names or marks that fall on the opposite side of a very important dividing line:

As the graphic illustrates, although it is possible to protect and own descriptive terms as trademarks, it isnt an easy task. Nor should it be, given legitimate concerns about fair use. Indeed, much time, effort and expense are involved in acquiring exclusive rights in a descriptive name or mark. More than a little luck doesnt hurt either. In fact, rights may never happen.

Because immediate exclusive rights arent created upon first use of a descriptive designation (in contrast to the treatment of suggestive, arbitrary, coined, and fanciful marks), there is a good chance that exclusive rights will never attach if others start to mimic or copy use of the descriptive name. When multiple unrelated parties utilize the same or similar descriptive phrase for similar or related goods or services, this almost assures that none of them will ever be able to demonstrate the necessary acquired distinctiveness to own enforceable rights.

Thankfully, Capsule and other design firms that “get it” (not to mention their clients) recognize and benefit from the fact that our intellectual property laws (happily) reward creativity, and this includes our federal trademark laws, to some degree.

Although U.S. Copyright Law is often cited as being designed to reward creativity and Patent Law is often cited as being designed to reward ingenuity, as the Spectrum of Distinctiveness reveals, for the purposes of U.S. Trademark Law, immediate rewards are granted to those who do more than name their business, product or service using the uninspired method called description. So, with all due respect, suggest, dont describe, the law will reward you for it.

In the end, its probably fair to say that inherently distinctive names and marks (which include suggestive ones) instill some level of imagination, thought, perception, or as Capsule likes to say — curiosity— in those who experience them. This curiosity not only serves the brand well by creating a stronger emotional connection with consumers and by making it more memorable to them, it also provides intrigue to the unobvious meaning, and thereby permits the brand owner to enjoy exclusive rights that may be enforced upon first use. Now, everyone is happy.

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