Choosing a strong trademark

A strong brand name may not always make a strong trademark.

The terms ‘brand’ and ‘trademark’ are often used interchangeably. Strictly, however, brands are marketing tools (i.e. the product’s ‘promise’ to consumers), while trademarks – that identify the brand – are legal rights that protect a business’s trading style from imitation.

The hierarchy of trademarks

There are three broad categories of trademark:

  1. Inherently distinctive
  2. Not inherently distinctive, but which have become so through use
  3. Those that will never be distinctive, no matter how much they are used in advertising or marketing.

Why is this hierarchy important?

Each category attracts a different breadth of monopoly (and therefore, legal strength). Inherently distinctive trademarks have much broader protection – competitors need to stay well clear in branding their competing products or services. But, if your trademark has only acquired distinctiveness you must be satisfied with a diluted right, at least initially.

What makes a mark distinctive?

Trademarks are inherently distinctive when they are either wholly invented – such as Kodak for film – or do not in any way describe the goods or services they brand, such as Apple for computers. Their very rarity, obscurity or inventiveness makes them distinctive.

Market reality for new businesses

At a legal level, an inherently distinctive trademark is the Holy Grail of branding, but this fails to take account of the brutal market conditions facing fledgling businesses. New ventures rarely have substantial marketing budgets.

Inherently distinctive trademarks, by their very nature, provide the target customer with no explanation of the product or service they brand, and so need substantial marketing campaigns, often beyond the reach of small businesses, to create product awareness. If the underlying product or service itself is novel, branding it with a highly distinctive trademark may be a mountain too steep for a start-up enterprise.

The apparent contradiction in branding is this: the more illustrative and illuminating your trademark is, the more it explains your product or service, the less legal strength it bears at the outset, as a trademark.

In the early stages, therefore, what is a strong branding device may not be a strong trademark. As the trademarks gain a secondary meaning and reputation, the values of these two instruments begin to align. While you are making your target market conscious of your product, through your brand name, you may have to co-exist with competing products marketed under similarly descriptive bands.

What these less distinctive trademarks lack initially, in legal enforcement power, they acquire organically as the trademark is used in advertising and marketing. As the trademark gains a reputation through commercial use, a secondary meaning – that transcends its original descriptiveness – becomes associated with it; easyJet is just one example.

A successful descriptive brand – a case study

Businesses whose trademarks are not protective powerhouses at the outset should not despair.

Coca-Cola is a prime example of the heights that can be reached by a trademark that, at the time of its conception, was highly descriptive. When John Pemberton conceived of his new ‘medicated’ soft drink, he gave it an amply evocative name to indicate to potential customers both its main ingredient and flavour. ‘Coca’ referred to the cocaine initially contained in the drink, while ‘Cola’, referred to a soft drink containing kola nut extract.

Few would dispute that COCA-COLA is one of the most (if not the most) powerfully distinctive trade marks in the world today. New businesses that do not have legally strong trade marks would do well to use this as their branding template, all the while remembering the Coca-Cola trademark’s humbly descriptive beginnings.

Written by Mark Smith, Valuation Analyst at ip21