Legal Blog

Saturday Side Hustle: Trademarks – Part Two

Read part one here.

Trademarks are some of the most important assets for any business, but especially for a food business. Let’s think about it.

Suppose you are in the grocery store cereal aisle. Lots of boxes, right? You want me to find your favorite kind of cereal right? It’s easy for me to find a bright reddish-pink box with a cartoon toucan or Fred Flintstone on it, right? And it’s also very easy for me to distinguish from those a big white box with a green rooster on it, right? I think the cereal aisle is a great example of trademark use. I think the best trademarks are the ones that allow me to find the box I want quickly, because if I don’t, I might see something else that I could just as easily be in the mood for and put it in my cart so I can get out of the grocery store and get on with my day.

There is no one rule that you need to follow to assure you’ve chosen a great mark, when you get around to choosing one. However, there are some concepts I’ll introduce now to help you think about your choice.

There are five “types” of trademarks you can consider, keeping in mind they really represent different points along a continuum of trademark strength. Without considering commercial use and secondary meaning, the weakest marks are generic words, e.g., calling your cereal “Cereal”. Descriptive marks are slightly better, however can be problematic. They are problematic because the United States Patent and Trademark Office (USPTO) will typically refuse to register a descriptive mark without evidence of distinctiveness.

On the middle of the trademark strength continuum are suggestive marks, such as “Cheerios” for breakfast cereal. Cheerios® was coined as a combination of “cheery” and “oats” (it was changed from “Cheeri-oats” due to a dispute with Quaker Oats). The mark isn’t entirely descriptive, but you can get to it with a step in logic.

The strongest marks, ignoring again commercial use and secondary meaning, are arbitrary and fanciful marks. I think of “Lucky Charms®” as being arbitrary; meaning, the words “lucky” and “charms” don’t have anything to do with cereal, if you view them in the abstract. Finally, fanciful marks are marks that are made up. For example, “Trix” isn’t a real word (well, maybe a suffix). Fanciful marks get the least resistance from registration by the USPTO, which is good for you if you’ve come up with one you like and want to apply for registration.

One reason to consider where your trademark falls on the strength continuum is that you may want to apply for registration with the USPTO, which provides many benefits to you as the owner. The USPTO will refuse to register generic and descriptive marks at the outset.

For more information on this topic, please contact Scott Lloyd at slloyd@offitkurman.com.

 

ABOUT SCOTT LLOYD

slloyd@offitkurman.com | 301.575.0357

Scott Lloyd is a registered patent attorney who specializes in intellectual property counseling and commercialization work. He has served as a technology commercialization specialist and advisor to companies in a diverse array of markets, including biotechnology, pharmaceuticals, medical devices, food and beverage, specialty chemicals, technology and engineering. In addition, Mr. Lloyd spent ten years as in-house general counsel to small and mid-sized companies, where he managed corporate matters and resolved commercial disputes in addition to intellectual property strategy, and now serves in the same capacity for entrepreneurial clients. He serves as counsel to small and mid-sized business owners seeking to implement growth strategies and succession plans.

While in house, Mr. Lloyd has also contributed to the successful formation of international affiliates of domestic businesses as well as a $400,000,000 business acquisition.

 

 

ABOUT OFFIT KURMAN

Offit Kurman is one of the fastest-growing, full-service law firms in the Mid-Atlantic region. With over 180 attorneys offering a comprehensive range of services in virtually every legal category, the firm is well positioned to meet the needs of dynamic businesses and the people who own and operate them. Our twelve offices serve individual and corporate clients in the Virginia, Washington, DC, Maryland, Delaware, Pennsylvania, New Jersey, and New York City regions. At Offit Kurman, we are our clients’ most trusted legal advisors, professionals who help maximize and protect business value and personal wealth. In every interaction, we consistently maintain our clients’ confidence by remaining focused on furthering their objectives and achieving their goals in an efficient manner. Trust, knowledge, confidence—in a partner, that’s perfect.

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