The best time to think about the legal aspects of your brand and trademark is when you pick the mark, before you invest marketing money or try to get it registered. That’s when it’s time to consider the trademark “spectrum of distinctiveness” of brands and how that spectrum either contracts or expands your legal rights. To competently choose a brand that will function as a trademark, a basic understanding of the “spectrum” is in order.

Judge Learned Hand identified the problem over a 100 years ago:

I have always been at a loss to know why so many marks are adopted which have an aura, or more, of description about them. With the whole field of possible coinage before them, it is strange that merchants insist upon adopting marks that are so nearly descriptive. Probably they wish to interject into the name of their goods some intimation of excellence, and are willing to incur the risk.

The “risk” that Judge Hand is talking about is that the descriptive mark does not get as much automatic legal protection as an arbitrary or fanciful mark. At one end of the spectrum (read up on the “spectrum of distinctiveness”), a mark can be arbitrary/fanciful; think: Google, Xerox, Kodak, Exxon. These words don’t describe the product or service that they mark. Just by looking at the word, and not knowing anything else about the goods or services, you would not likely guess what the mark stood for.

At the other end of the spectrum, a mark can be descriptive. The mark describes the product or service it is marking: 5-Hour Energy, Le Croissant Shop, International Business Machines. You can look at the mark and know what it’s talking about. Descriptive marks have less legal protections in a variety of ways, but generally because courts don’t want to allow the owner of a descriptive mark to be able to prevent other market participants from being able to describe their products.

So, as a practical matter, if you are going to choose a brand that you will want to enforce as a trademark, it makes sense to consider how descriptive the mark will be of your products. There are some nuances, and it is not always clear, but at least being aware of the issue will help you know when it might be a good time to engage legal counsel before investing in a trademark that won’t work.

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