The Importance of Distinctive Branding - A Legal Perspective

When strategically thinking about choosing a brand name and building your business around it, there are a lot of considerations to make. Amongst them is the legal protection surrounding your brand (also known as a trademark) – which is afforded by intellectual property law. Essentially, when you begin thinking about your brand, you’ll need to consider the legal strength of the trademark you pick. This is important as it impacts the degree to which a court will protect you against misuse of your trademark by competitors.

Know from the get-go that a legally strong trademark has two basic characteristics: The first is that it successfully identifies the goods or service in a consumer’s mind. The second is that through use (and perhaps trademark registration with the USPTO), competitors are prevented from using it (or a similar mark) in any context where customers may be confused as to the source of the goods or services, or misidentify the goods or services as coming from a competitor.

Once you understand the importance of picking a legally strong trademark, the next step is actually choosing one. You’ll want to focus on the distinctiveness of your brand or trademark – the most distinctive marks will be most protectable (compare to generic marks which are not protectable at all). Distinctive marks fall into three basic categories: coined, arbitrary and suggestive. I’ll discuss each in turn below.

 Coined Marks. A coined mark is simply made up. Examples of coined marks include Uber, Reebok, and Tylenol. These marks have no other meaning, and are legally the most defensible. In practice, these marks cannot be used by anyone else in any other context, which makes them particularly attractive.

Fanciful or Arbitrary Marks. Fanciful or arbitrary names are also distinctive. Apple (describing electronics) fits under this category. Other examples are Penguin Books or Camel Cigarettes. These marks are common words that are used in an arbitrary manner. This is to say that they have nothing to do with the actual goods or services that they identify. Pick an arbitrary word to describe your business, and so long as nobody else is using it in a similar manner, you’re in good shape.

Suggestive Marks. Words that suggest the goods and services provided in order to create an idea in the customer’s mind about the goods are services are called “suggestive.” Suggestive marks are closely related to fanciful marks, and are considered legally strong because of their ability to indirectly associate certain qualities with goods and services. Classic examples are Greyhound (for a bus service), and Jaguar (for automobiles). These are good too.

If you understand the basics, don’t worry too much about the nuanced distinction between suggestive marks and those considered fanciful or arbitrary. Marks fitting into those categories can often be argued more than one way. The important thing is that they’re considered distinctive, and because they’re distinctive, they afford you the most legal protection. So, when you’re thinking about your branding strategy, don’t forget to go out on a limb, and get creative. You’ll be rewarded, legally speaking, for doing so.