NameChangers PodcastTrademarking

How Strong is Your Trademark? | NameChangers Episode #5

By October 7, 2019 May 26th, 2020 No Comments

Suggestive trademarks simply suggest an idea of the services or goods that you’re providing instead of blatantly descriptive trademarks. Ever been to the Genius Bar at an Apple Store? Find out why names like “Genius Bar”, “Pinterest” and others are quite possibly the perfectly balanced trademark.

Episode #5 Transcription:

Hey quick note: This is part three of our five-part series on trademark strength. If you haven’t checked out one and two, go ahead and check them out now.

Netflix, Burger King, Pinterest, and a craft store named World of Woolcraft; what do those have in common? Besides sounding like a good Tuesday night, they actually are under the same trademark strength. Now, as a professional namer, this strength is what I call “The Sweet Spot” because it’s the perfect meeting between protection and description, but let’s not get too far ahead of ourselves.

I’m James Doherty and this is Name Changers.

Now before we start, there’s an important word for this strength that you need to remember and that word is: Pause.

Christopher Roden: If you’re able to create a mental pause in the consumer’s mind as to what the connection is between the mark and the goods or the services that you’re providing, that will end up making the mark suggestive even though that term may describe it.

James: In our last episode we talked about descriptive marks. Basically your company name flat out, plainly tells you what your company is. Sweet Lollipops, Crunchy and Sweet Cereal, just using simple adjectives to describe your product with little or no imagination. Now, if you want to pizzazz that up a little bit that’s when you get to suggestive marks.

Roden: So a suggestive mark is similar to a descriptive mark in that it suggests an idea of what the services or goods that you’re going to be providing. So a good example of a suggestive mark honestly would be the Genius Bar from Apple, and I’m not sure if Apple has a registered trademark for this, but the idea is that it suggests that the people behind the bar are, behind the bar that they have because everybody walks in and sees the physical IT bar at the Apple Store it suggests that the people are, brilliant enough to solve your problems. It doesn’t necessarily describe the people working there because, let’s face it, most of them are mid-level employees, but
ultimately, those people are at a very minimum competent and able to help you solve your problem. It’s laudatory, but it’s also suggestive in such a way that you know those people are going to be able to, like I said, help you with your problem.

James: Suggestive marks suggest certain qualities about the goods or services. It doesn’t come right out and say it. It’s kind of like a “wink wink” rather than a slap in the face. So, the name should trigger some ideas in the customer’s head of what your company is about. A good example is Microsoft. They make software for micro computers, simple, effective, and it’s a great name.

Not all suggestive names need to be this straightforward, take a look at Jaguar. Jaguars are majestic creatures, extremely fast. They’re strong and they’re surprising. They’re rare animals, not something you see every day and they purr loudly. They could have just named their company Majestic Motors, which has a nice ring to it, but it only gives you that one descriptive word. Whereas Jaguar gives you a whole slew of adjectives just from that one word.

However, there’s another part of this trademark strength that I love.

Roden: So, yes a pun would actually make a mark suggestive. One of the ways the USPTO recognizes a mark as suggestive as opposed to descriptive is if there’s a pun or a double entendre. So there’s a mark on the principal register right now called Sugar and Spice and it’s for cookies. It might not be there anymore, but it attained registration. There was a case in one of the administrative USPTO boards about it and the reason that it was able to obtain a registration, the reason that the USPTO determined that it was suggestive, is because, obviously, when you’re baking cookies, you’re going to be using Sugar and Spice. On the other hand, you have that classic nursery rhyme that everybody knows about how to make a girl, “sugar and spice and everything nice.” So the idea that it was a play on words on that allowed it to meet the statutory definition of a suggested mark, and keep in mind that statutory definition is very vague because trademarks, as have been discussed, are on the spectrum.

James: If that nursery rhyme didn’t exist, would they have fallen into a generic trademark?

Roden: They very well may have it all depends on the culture and the context and the goods and services.

James: Just look at the name of the podcast. I. Love. Puns. And luckily there are no shortage of puns as business names. In my town, one of my favorite Chinese takeout places is called Wok and Roll. My mom just started a low-carb diet and she bought a low carb pasta called Impastable. And also there’s an Italian restaurant called Pastabilities. I just can’t get enough of this stuff.

But do puns cheap your brand? Not always. Just look at a great example: Pinterest. Pinterest is the combination between “bulletin board” and “interest”. You post things up on a bulletin board with pins and in this one you’re pinning your interests Smart, sleek, sharp name. Another example is Chicken of the Sea. At first, it sounds kind of odd, kind of cool, but kind of mysterious, but it gets the point across, it’s tuna, and they’ve become a huge brand because of it.

Roden: So one of the big landmark PTAB cases, PTAB is the trademark trial and appeal board you can appeal if you don’t like the examining attorney’s decision, one of the big PTAB cases was for SnowRake. The idea, what the products behind it was a rake that you could use for removing snow from a windshield. So that particular good was meant for raking snow off of windshield and so on but USPTO determines that because one doesn’t generally rake snow, that the consumers are going to have a pause and end up recognizing that as a brand as opposed to just a thing that is used to get snow off of one’s windshield.

James: So the reason I love this realm of trademark is because it’s a nice intersection between description, creativity, and trademark protection. So, with descriptive mark, you’re not letting the customer really use their imagination. Some people like that, they like to be told what it is, but you put yourself into a small box. What if Sweet Lollipops wanted to make savory lollipops and what if they wanted to make a different product? Also your name is not a random word which you have to find a way to tie to your company which can cost a lot in marketing. The product or service is already inherently tied.

But we still have two levels to talk about before we make that decision.

Name Changers is made in association with names numbers and naming agency in Austin Texas. Find out more about them at namestormers.com. Special thanks this week to Chris Roden. If you like the podcast, please rate and review us wherever you get your podcasts. It will really help people find us. I’m James Doherty and we’ll see you next time.

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