Branding (or rebranding) can be an anxiety filled process or a streamlined professional success. The difference between misery and success is best practices–starting with selection. The process of selecting a “good” trademark often confuses a lot of entrepreneurs.
Trademarks and service marks are, by definition, a designation of the source of the goods and services associated with them. They were never intended to describe the goods or services. To better understand this principle, we start with the “Spectrum of Distinctiveness” (SOD).
The SOD is a useful method of aligning the interests of the company with the registration requirements of the trademark registration offices around the world. While there are numerous variations in trademark registration practice around the globe, the SOD is an excellent guide for selecting a strong mark.
The SOD is structured in tiers. Strong marks are preferred over weak ones.
| Tier Designation | Relative Strength | Example(s) |
| Fanciful (made-up words) | Strongest | EXXON for petroleum products;
PEPSI for soft drinks |
| Arbitrary (not related to the goods or services) | Strong | APPLE for computers and phones |
| Suggestive (Hints at the good or services, but doesn’t describe them) | Moderately strong | COPPERTONE for suntan lotions and sunscreens TOP FLITE for golf balls |
| Descriptive (Describes the goods or services or attributes thereof and includes some laudatory marks.) | Weak.
Cannot register without secondary meaning acquired over time. |
CREAMY for yogurt;
APPLE PIE for potpourri
|
| Commonly descriptive (includes the most basic laudatory marks) and Generic | None.
Not registrable, these words can never serve as trademarks or service marks. |
BICYCLE for bicycles;
BAGEL SHOP for a bagel shop; E-TICKET for computerized reservation and ticketing of transportation services. |
(Please note: Selection is only the first step in a successful branding initiative. Selected trademarks should “cleared” for adoption, used correctly, and registered to promote sustained competitive advantage.)
The IP team at Chenoweth Law Group has decades of branding experience! We can help you with any aspect of trademark selection, clearance, adoption and use, and registration. We also help marketing teams produce the most impactful promotional materials to advertise company products and services while minimizing the risk.
