With that introduction, now seems like a good time to revisit the critically important line — in terms of legal protection — between descriptive and suggestive names, and also provide a handy graphic to illustrate the Trademark Spectrum of Distinctiveness:
A few prior posts, here, here, and here, discussed related issues, but they did not specifically mention the all important spectrum that trademark types consult on a daily basis. Marketers and naming gurus would do well to keep a copy under their pillows too, or at least on or near their nightstands.
Anyway, Burt’s post did a nice job of contrasting the marketing pros and cons of pursuing names like Monster.com, TheLadders.com, and CareerBuilder.com, for similar on-line job listing and employment businesses. And while some legal types may, as Burt suggests, direct marketer’s toward the far right end of the spectrum during the naming process, the most important line to cross is from descriptiveness to suggestiveness, because doing so offers the potential for immediate ownership and rights in the name. Once this critical naming line is crossed, marketers and legal types can both be content with the name selection, at least from a conceptual standpoint.
Now recognizing the spectrum or continuum nature of this exercise, the problem, of course, is at the edges of a category where the conceptual differences between names may not be great on either side of the line, but the difference in the timing of legal protection can be the difference between day and night, times about five years or more, in many cases.
Interestingly, the CareerBuilder.com example illustrates one that could be argued either way. Burt makes a pretty compelling case for treating it as simply descriptive, but according to the U.S. Trademark Office, it is sufficiently imaginative to fall on the right side of the line to be in the same legal category as the admittedly more creative name: TheLadders.com. Given the close nature of this call for CareerBuilder.com, they would do well to promptly file the appropriate papers with the Trademark Office to make the registered rights “incontestable” — because doing so would forever remove an adversary’s ability to argue or try and prove the name is merely descriptive and lacking in distinctiveness.
In keeping with the on-line job listing business examples, Job-Hunt, actually is a much clearer example of a merely descriptive name, one that the U.S. Trademark Office considered immediately and merely descriptive for “business and career networking services” and, in fact, required proof of acquired distinctiveness before a federal registration could be issued.
Finally, lest anyone think that hovering on the far right end of the spectrum and selecting an abstract or arbitrary name like “Monster” avoids all possible legal issues, you haven’t heard of how Monster Cable pursues others using that term, see here. But that is an entirely different post for an entirely different day.