What do companies get wrong when applying for trademarks?

They should think more broadly about what could serve as a trademark.

What do you mean?

A trademark can encompass any number of things. I helped Mystic Lake Casino register the light beams that form the teepee above its casinos. Owens Corning trademarked the color pink in connection with its insulation for use in the housing industry. Things like that. Just don’t try to trademark descriptive language. Avoid the D word; wipe descriptive out of your vocabulary.

Why?

You want to be in the business of suggesting a product, not describing it. Be in the business of metaphors.  The law rewards creativity.

What about generic terms?

When you’re dealing with trademarks, generic terms are part of public domain. Anyone can use a generic term without risk of being sued.

What about functionality?

When you’re dealing with non-traditional trademarks, like distinctive product shapes or perhaps a color, functionality will kill them. So, if your advertising touts the utility or function of a claimed trademark, that’s like saying you don’t own anything.

Can you give an example of what not to do?

Lexus went to the patent and trade office and registered a trademark in the spindle shape of the grille on one of its cars. Their advertising touted the shape as functional, which puts the validity of the trademark at risk.

How do you fight back against trademark bullying?

You have to be aggressive. Chick-fil-A offers a good example. A Vermont artist trademarked a T-shirt with the phrase “Eat More Kale.” Chik-fil-A objected, saying it was an infringement on its slogan “Eat More Chikin.” It wasn’t. They walked away. That was an example of someone punching a trademark bully in the nose.

How much subjectivity is in trademark law?

Think of it as the opposite of real estate. You can’t measure the property line of a trademark and know when it has been crossed. Someone with authority has to confirm where the line is. That’s what the court or trademark office does. It’s a very nuanced field, requiring special expertise.

How can brand owners organize their thoughts on the scope of their rights?

I tell people to visualize a target that has concentric circles with a bullseye target. If you’re not vigilant about protecting your scope of rights, it’s inevitable that others will nibble at the edges in the bullseye. Eventually all you will be able to protect against are identical uses.

What are the objectives brand owners should strive to achieve with their trademarks?

To protect brand investments and reputation, prevent confusion in the marketplace, and keep competitors at a safe distance.

How can brand owners be proactive?

By having systematic watches in place to monitor what’s going on in the trademark office. There are computerized trademark watch services you can set up.

But you also don’t want to get paranoid?

True. The worst thing you can do is fire off demand letters without knowing all the facts. Confirm first who has priority of rights.

You said you don’t like the word descriptive when it comes to trademarking products and ideas. What word do you like?

Distinctiveness. That’s key. Whether a distinct logo, a distinct word, a distinct color pattern or a distinct product shape. That’s what you protect.