Adopting a trademark is an incredibly important decision and potential risk for a business. And while adopting a trademark may seem like an easy thing to do, the legal ramifications of this decision make it more complicated than most people appreciate. 

There is no standard way to adopt a trademark.  However, the first step in this process is always the same: picking a name to use as your trademark. There are several things to consider when deciding on a name to use as a trademark.  This post focuses on a common issue people run into when picking trademarks: the urge to pick a name that is merely descriptive of your goods and services.

Businesses find this issue is a source of contention between marketing and legal departments.  From a marketing standpoint, a business should use trademarks to convey information about goods or services to potential customers. However, from a legal standpoint, trademarks are about identifying the source or origin of goods or services.

With apologies to the marketing department, there are two main reasons why picking a descriptive trademark can be detrimental to your overall brand and business:

1. Descriptive trademarks are not immediately eligible for protection. A mark that is considered “merely descriptive” of the goods and services do not serve as a source identifier and thus are not eligible for protection.  This means that you do not have the right to exclude people from using your trademark without showing that your mark has acquired “secondary meaning.”

Secondary meaning is a legal term that means consumers understand your product or service comes from a specific source. However, to show secondary meaning, a trademark owner must demonstrate substantial and exclusive use of a trademark. This typically requires use of the mark for at least five years, a showing that no other person is using the mark on similar goods, and that the mark owner has spent significant financial resources in advertising and selling under the trademark.

Even if an owner can show the above, there is simply no guarantee that a court or the US Patent and Trademark Office will find your mark deserves any substantial protection.  Descriptive marks do not present a good return on the investment the mark would require.  

2. Descriptive names do not function as a trademark.  Notwithstanding the fact that a descriptive mark is ineligible for protection, a descriptive mark is not good for marketing your business.  When you pick a descriptive mark, it is likely that many other people are using some form of your trademark to describe their goods or services. Thus, it is less likely that consumers will associate your business with your product when using a descriptive mark. If reputation and branding is a business most important asset, then having a mark that serves a source identifier is essential to a strong brand.

As you can see, there are significant disadvantages to adopting a descriptive name as your trademark, most of which can be avoided.  In the coming weeks, we will look at ways to properly use your trademark to ensure you maintain it. For more information on choosing a trademark, take a look at previous posts including "The Woes of Failing to Conduct a Trademark Search" that discusses descriptive trademarks, and Parts I and II of the discussion of disparaging trademarks. Also in this series on Trademark Dos and Don'ts, "Conducting a Trademark Clearance Search.