Why Are Some Brand Names Harder to Protect Than Others?

Most business owners put a tremendous amount of thought into choosing a brand name. After all, your brand name is often the very first thing people associate with your company, your reputation, and the products or services you provide. However, what many people do not realize is that just because a name sounds professional, memorable, or marketable does not necessarily mean it will be easy to protect under trademark law. In fact, some brand names are significantly more difficult to defend than others, and if you choose the wrong type of name from the outset, you may eventually find yourself dealing with registration problems, infringement issues, or competitors using names that are frustratingly similar to your own. Continue reading and contact Lemler IP to speak with a New Orleans, Louisiana trademark lawyer to learn more about why some brand names are harder to protect than others.

Here are some of the questions you may have:

What Makes a Brand Name Strong Under Trademark Law?

Generally speaking, the more unique and distinctive a brand name is, the easier it is to protect. Trademark law is designed to help consumers identify the source of goods or services, which means names that stand apart from ordinary language usually receive broader protection. Some of the strongest types of trademarks are as follows:

• Fanciful marks, which are completely invented words (such as Exxon or Kodak)
• Arbitrary marks, which are real words used in an unrelated context (such as Apple for computers or Dove for soap)
• Suggestive marks, which hint at a product or service without directly describing it (such as Netflix for streaming movies)

On the other hand, weaker trademarks often include:

• Descriptive names that directly explain the product or service (such as Best Buy)
• Generic terms that are commonly used within an industry

For example, if a company attempts to trademark a phrase that merely describes what it sells, there is a good chance the United States Patent and Trademark Office may view that name as too weak for broad protection. This is because trademark law generally does not allow one business to prevent competitors from using ordinary descriptive language that others in the industry may reasonably need to use as well.

Why Are Descriptive Brand Names More Difficult to Protect?

Naturally, many businesses prefer descriptive names because they immediately tell consumers what the company does. While this may appear beneficial from a marketing standpoint, it frequently creates complications. Descriptive brand names are often harder to protect for several reasons, including the following:

• Consumers may view the name as informational instead of source-identifying
• Competitors may argue the wording should remain available for public use
• Federal trademark registration may become more difficult to obtain
• Trademark enforcement actions are often weaker in infringement disputes

Furthermore, the United States Patent and Trademark Office (USPTO) frequently relegates descriptive brand names to the Supplemental Register. Unlike the Principal Register, the Supplemental Register does not grant you the legal presumption of ownership or the exclusive right to use the mark nationwide, leaving your brand in a weaker defensive position.

However, in some cases, a descriptive name can eventually gain legal protection through what is known as “secondary meaning.” Essentially, this means the public has grown to associate that name specifically with one business over time. However, establishing secondary meaning is rarely simple. In many situations, businesses must provide substantial evidence showing years of advertising, extensive public recognition, consumer association, and consistent branding efforts before stronger protections apply.

How Can Businesses Choose More Protectable Brand Names?

When selecting a brand name, business owners should think beyond marketing alone. Though a name may sound appealing at first glance, it is important to evaluate whether the name is actually capable of receiving meaningful trademark protection. Generally speaking, stronger trademarks often include qualities such as:

• Distinctive wording that is not purely descriptive
• Unique phrasing consumers are unlikely to confuse with competitors
• Minimal similarity to existing registered trademarks
• Flexibility for future business growth and expansion

Before finalizing a name, businesses should strongly consider conducting a comprehensive trademark search. Doing so may uncover existing trademarks that could create issues down the road.

If you have further questions or would like to speak with a knowledgeable attorney, simply contact Lemler IP today.