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    Tuesday, April 22, 2008

    A Rose by Any Other Name.

    If patents are the heart of a business’s competitive edge, trademarks are the face. New entrepreneurs frequently seek information regarding choice of a company or product name. Despite the seeming ease, choosing a mark by which people will identify your product or company can be difficult. Opposing considerations come into play. Does the chosen mark add to marketability? Does the chosen mark infringe someone else’s mark? Can the chosen mark be protected? The more descriptive a mark is, and thus potentially more immediate marketing edge, the less protection it may receive, and perhaps no protection at all.

    Marks are placed on a spectrum of protectiveness defining what must be done to make them protectable, i.e., are they inherently distinctive, distinctive only after acquiring secondary meaning, or never distinctive. While generic marks immediately identify the product, they are not protectable in most jurisdictions. Fanciful or arbitrary marks can be immediately protectable, but they give no information about the product whatsoever, so have no immediate marketing bump. A choice must be made then, whether to seek little or no protectability with a generic or highly descriptive name, little or no immediate marketing bump with a fanciful or arbitrary name, or somewhere in between. Once that choice is made, the question becomes whether someone else has the name for the same or related good, which would interfere with the ability to get protection for the entrepreneur, and open the entrepreneur up to trademark infringement or dilution liability.

    How does an entrepreneur navigate these shoals? First, make the choice of whether to seek immediate marketability using a descriptive or generic name, or to go with a name less immediately marketable but more immediately protectable. Second, conduct a trademark clearance or name availability search. Third, if a name is chosen that is potentially protectable, and a search reveals no conflicting uses, decide whether to seek formal registration of the mark. Choosing a mark, like growing roses, can be thorny, but when grown correctly, be just as sweet.

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