Canny marketing - getting to yes he can

It is not uncommon for trade mark attorneys to berate marketing people about their choice of names for trade marks. Indeed, in many cases it is a significant cause of friction between legal and marketing departments. This is because, from a trade mark attorney's point of view, a strong trade mark is one that it is invented or only alludes to the characteristics of the goods, whereas from a marketing point of view the most attractive names are often descriptive and in some cases, even generic names. There is also a want to use trademarks as verbs, which has traditionally been banned by trade mark attorneys.

Yet, descriptive and even generic names can be very strong brands and so can some trademarks that are used descriptively or as a verb. Think about Arsenal (football), Polo (shirts), Wimbledon (tennis), Kettle (chips), Google (search engine), Skype (online calls), the Springbok and the English Rose or World Cup (rugby), Econometrix (actuaries) or The Economist, Wall Street Journal , The Lawyer and Financial Times (publications) or the Extreme Sports Company (sports). These words are either descriptive, generic or normal trade marks sometimes used as verbs (eg I skyped my friend), yet they are all strong brands.

Attractive - the flexible attorney

Sometimes descriptive names are  the result of unimaginative creatives. However, in other cases descriptive branding is quite deliberate. Consider how it is used to mask attempts at ambush marketing or to fight for consumer attention when the marketer does not have the budget or time to spend educating the customer about a name that bears no meaning relative to the service or product. The consumer need for instant gratification and personalisation has also lead to the concept of using brands as verbs (known as brandverbing) which is quite deliberate, despite the possible long term negative effects on the trade mark. Having a flexible trade mark policy for canny marketers has therefore become important.

Here are some considerations:

·        Trademarks remain territorial in nature. What is generic in one country may not be known or a well known trade mark in another in another (Polo in the UK v Polo in RSA; Kettle in the USA v Kettle in Europe; Xerox in the US and Xerox is RSA etc). Similarly, a process coined in one country could be branded in another.

·         Descriptive or generic terms mark may work well as trade marks for closely related or complimentary goods or services and used there to grow a brand eg EAT for juices or EXTREME for hotels.

·         File, file, file and then police, police, police – obtain the trade mark and protect it vigilantly to educate the public that it is a trade mark.

·         Using ™ and ® is useful educational tool for marketers because is illustrates what is proprietary and what is not.

·         Educate your own staff on what is proprietary and what is not but be careful if the intention is to brandverb or deliberately use marks descriptively. Internal guidelines may be discoverable and disgruntled ex employees subpoenaed.

·         Try to protect consumer surveys conducted by the company that could be damaging to your brand, with legal privilege.

·         Give the industry some other way to describe the product or service. This is often used in the pharma sector for new drugs – one name is the trade mark and the other given to the industry to describe the drug. The timing of this strategy is important because the marketing department may wish to first try to monopolise the industry using the brand as a descriptor to gain market share but there is a real and almost irreversible risk of the mark becoming generic and free for all to use.

·         File for the word mark and the descriptor with a logo. One will go through to registration, the other can more often than not be kept pending until the mark has developed a secondary meaning if that is possible or otherwise serve as a deterrent to those who search registers before launching products.

·         Be prepared to spend money on a legal budget and allow for consistent engagement with your advisor.

·         Make full use of the first to market advantage and closely monitor how your brand is being used.

·         Use other forms of intellectual property protection to keep competitors away eg patents, copyright and designs.

·         Use no-challenge clauses in licenses and co-existence arrangements to protect the trade mark.

·         Be aware of trade mark legislation and public policy safe havens for the legitimate (and sometimes, not so legitimate) hunt for market share through branding using descriptive terms. This is important if you intend to use them or for keeping competitors from doing so.