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Archive for August, 2009

Choosing a new trademark

Posted by ipelton on: August 31st, 2009

When launching a new product or service, or re-branding an existing one, here are a few quick tips for coming up with a great trademark:

Be creative. Some of the best names are ones you had never heard of before they were created.  Google. Kodak. ESPN.  There are coined names and are the most unique of possible names.  And they are the easiest to protect and the strongest trademarks.  See prior post here for more details about trademark strength.  Creative spellings or combinations of syllables and words also make for good trademark possibilities.

Be early. It takes a few weeks generally to clear a new name with a comprehensive search. And if possible, it is best to wait to begin using a new trademark until it has been reviewed by the USPTO, and hopefully approved.  If possible, give yourself 6 months before launching a new product or service to select, clear and file a new name.

Brainstorm. When coming up with a new name, don’t focus on one possible name but come up with a few different ideas, or pieces of name,  dozens of variations or combinations.  Then sleep on it, discuss with others – including potential customers if possible – narrow your list to a handful of possibilities.  Then contact a trademark attorney.  If you hone in on one name too early, and that name is not available, you will have a harder time letting go of it and considering alternatives, and you will be losing time.

Have a message. What are you going to communicate to customers with your trademark?  A brand name can convey one or more of many characteristcs, such as: trustworthy, fun, young, simple, conservative, bold, sexy, new, old, funny, fancy, rich, local, or corporate.  Before you focus on potential names, focus on the message you want that name to send.

Think BIG. Remember, if your business is successful, it may be known worldwide. Someone may want to license, franchise or purchase it.  When developing a brand, if you think it is not that important, then odds are your brand never will be important. But if you think about the possibility of being hugely successful, maybe one day you will and then hopefully you will have a brand equipped for it.  If the creators of Google, Coca-Cola, Kodak, and the Gap, settled for a boring or unprotectable brand name it would actually have limited their potential for success.  Customers and investors are less likely to get behind a brand name that is boring or that is not strong.

These are just a few tips for development of a new brand name or slogan.  Once you have some possibilities after a brainstorm, do some searching on your own for conflicts and then consult a trademark lawyer for advice and a comprehensive clearance search and analysis.

Strong vs Weak Trademarks

Posted by ipelton on: August 26th, 2009

Some trademarks are entitled to greater protection than others. There are five basic types of marks, presented below in order from those with the most protection to the least, they are:

Coined: completely new and made up terms, such as

  • Exxon® for oil and gas
  • Kodak® for film and cameras
  • SYSAX® for Encryption and decryption software
  • ERBX® for Industrial protective eyewear; safety eyewear

Arbitrary: not made up, but unrelated to the goods or services, such as

  • Yahoo!® for internet services
  • MAPLE® for Entertainment, namely, live music concerts
  • Apple® for use with computers
  • 3 LEAF PRODUCTIONS® for audio editing and production services; musical composition for others; sound design services

Suggestive: words which relate to the goods or services, but are not descriptive of them ,such as

  • ROLLUPMATIC® for aluminum hurricane shutters
  • CAFE GELTATOHHH!® for Restaurant services featuring gelato, paninis and coffee
  • EBEANSTALK® for Online retail store services featuring developmental toys, games, puppets, and puzzles for children
  • DURAWRAP® for Plastic stretch film for industrial and commercial packaging use for wrapping cargo
  • ROCK & ROLL® for baby strollers
  • BLUE LINE MARKETING® for advertising and marketing services to associations, manufacturers and service providers in the fields of law enforcement, police, public safety, sheriff, corrections, and physical security
  • TUFFRAX® for Ceiling-suspended shelves for residential use

Descriptive: terms which can be used to refer to a product or service, or its functions or characteristics, such as

  • Sports Illustrated® for sports magazine
  • US PRO GOLF TOUR® for golf tournaments
  • CERTIFIED MEDICAL HYPNOTHERAPIST® for Educational services, namely, conducting classes, seminars, and conferences in the field of hypnotherapy
  • WORLD BUSINESS DIGEST® for Educational television programming in the field of business

Generic: words which are commonly used to refer to a good or service, or answer the question “what is it?” (such as “Laptop” for a portable computer)

Coined, arbitrary and suggestive names are generally able to become registered trademarks, provided someone has not already registered a confusingly similar mark for a related product or service. Coined and arbitrary marks are given the ‘strongest’ protection and are thus the most desirable. Descriptive marks may sometimes be registered, but generally are afforded less protection. For this reason, descriptive marks are considered ‘weak.’ Generic trademarks are the weakest of all – they are entitled to little or no protection.

In my opinion, suggestive names or coined terms that are suggestive are generally the best — because they are entitled to good protection, creative, and tell the consumer something about your goods or services.

Learn more About Trademark Registration at tm4smallbiz.com.

Recent Trademark Registrations

Posted by ipelton on: August 21st, 2009

Here is another sampling of some recent registrations our clients have received from the USPTO, so readers can see real examples of brands and marks which are being protected.  (These are all public records – click on trademark name or logo to view USPTO records.)

for “Educational services, namely, conducting informal programs in the fields of sustainable living, organic foods and gardening, homesteading, the environment, and conservation, using on-line activities and interactive exhibits; entertainment services, namely, providing a web site featuring photographs, audio, and video featuring sustainable living, organic foods and gardening, homesteading, the environment, and conservation; on-line journals, namely, blogs featuring sustainable living, organic foods and gardening, homesteading, the environment, and conservation”

THE RACE TO RECOVER AMERICA’S MISSING CHILDREN for “Entertainment in the nature of motor racing and road rally events; entertainment in the nature of competitions in the field of motor racing contests”

AIRBRUSH NATURALS for “Foundation make-up”

One slogan, one logo, and one brand name, the trifecta of most common types of trademarks.

Name that trademark

Posted by ipelton on: August 19th, 2009

Recently, the world of music lost guitar wizard Les Paul.  A Les Paul® is a brand of guitar, and a registered trademark.  Trademarks are anything that distinguish your goods or services from the competition.  Les Paul’s name was stamped or labeled on the guitars he made for Gibson, and thus it was a trademark.  Fashion designers (Ralph Lauren, Calvin Klein), musicians (Tom Petty and the Hearbreakers, Placido Domingo), and sports stars (Tiger Woods, Michael Jordan) all promote their name as a brand name, whether it is on merchandise or in performance of their services.

But you don’t have to be famous to have a name that is a trademark.  The Erik M. Pelton & Associates PLLC logo is a registered trademark.  Stage names, initials,  pseudonyms, and nicknames may be trademarks as well.

Many names that are not famous or celebrities are registered trademarks. For example, the following are registered trademarks obtained by our firm:

Note that a name that is “primarily merely a surname” may not be registrable.  If the public would recognize the trademark as only a common last name, it may be unregistrable or entitled to less protection as a matter of policy in order to allow others with the same surname to be able to use it.  For more about surname trademarks, see here.

Lesson: If your name is part of your brand, part of your marketing, and have you properly protected its trademark rights?

Love it or Leave it – Chevrolet VOLT trademark

Posted by ipelton on: August 13th, 2009

Hype is building recently for the release of the new Chevy Volt car.  The car is expected to get 230 MPG in city driving and is the first big release of a new electric or hybrid model since the US car companies tanked.  Is it the future of driving? I don’t know, but I doubt it.  Stopping to charge a car just isn’t that practical or sexy, unless it only takes a few minutes.

The VOLT brand name, I like it a lot.  VOLT sounds small, cute and fast (even though the car may not be).  Of course, it is highly suggestive of the electric engine.  Suggestive trademarks are generally, in my opinion, the best kind for most businesses — they hint at your product or services without using common descriptive words that are difficult to protect as trademarks. (Some suggestive names: 7-11; Palm,  Geek Squad.  Arguably Descriptive names: U.S. Cellular, National Football League; Wall Street Journal; Baltimore Light & Gas; etc.)

US trademark application by General Motors for VOLT here.

(A clever trademark application for CORVOLTTE filed by someone here.  No surprise that GM has filed an Opposition to the application.)

While I like the VOLT brand name, I’m not sold on their marketing thus far.  I the below image dozens of times without a car in front of it and didnt’ immediately know what it meant or was promoting.  I thought it had to do with “23″, not “230″.  If it had just said Volt on it somewhere, it would make a lot more sense (to me).

Lesson: Is your brand name suggestive?  Does it require too much though to figure out what you offer customers, or not enough though? The VOLT name gets it right, I think, but the advertising for it has some more to do.