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The D-Word: What Ever You Do, Don’t “Describe” Your Brand!

Posted in Advertising, Branding, Infringement, Law Suits, Marketing, Trademarks

Frequently brand owners find themselves in the position of wanting or needing to explain the thinking behind their name, mark, and/or brand. Sometimes the explanations appear publicly on product packaging, websites, catalogs, brochures, advertising, and frequently in press releases, or perhaps in statements to reporters, especially when trademark litigation concerning the brand is involved. Such explanations about the brand’s meaning also can be found in consultant’s naming briefs that are easily discovered during litigation, and, if the brand story is told there in a way that "describes" instead of "suggests," the D-word may be used against a brand owner during trademark litigation to severely weaken if not invalidate the underlying trademark. 

Word to the wise. Be very, very careful in the words you choose to convey the meaning behind your brand. All too often brand owners and their consultants unwittingly explain the meaning behind the brand name in ways that can push it down the Spectrum of Distinctiveness into the realm of Limbo Land, a place where inherent distinctiveness and immediate trademark rights do not exist. For more on this point, see A Legal Perspective on the Pros and Cons of Name Styles.

Firefly Digital may have to learn this lesson the hard way. Firefly Digital brought a trademark infringement lawsuit against Google for its use of the term GADGET in connection with various Google service offerings. Firefly Digital apparently was able to federally register GADGET and WEBSITE GADGET for computer software and related services, and the Trademark Office registered them as inherently distinctive marks, deserving immediate protection without proof of acquired distinctiveness or secondary meaning. For a rather witty account of Firefly Digital’s trademark fight with Google, see Ron Coleman’s Gadget Goes Gonzo post from a few days ago.

Engaging in a trademark battle with Google is tough enough, but Firefly Digital certainly didn’t help itself by the following explanation of the meaning behind its claimed GADGET and WEBSITE GADGET trademarks:

“They embody our passion, our vision and our values,” Spears said. “They are descriptive of our products on many levels. Firefly is a business given life through ingenuity, hard work, the contributions of our employees and the trust of the many clients we serve. We’re prepared to protect that.”

Putting aside what Nancy Friedman might call another misguided use of the meaningless P-word, for Firefly Digital to utter the D-word and admit that its trademarks "are descriptive of our products on many levels," is an admission unlikely to go unnoticed by Google and likely to haunt Firefly Digital for some time.

The problem with "describing" the meaning behind a brand name is that it undermines a claim of inherent distinctiveness and puts the brand owner in the position of having to prove distinctiveness. It also complicates the issue of priority since trademark rights aren’t acquired upon first use with merely descriptive marks, as they are with those types of marks falling on the suggestive side of the line along the important Spectrum of Distinctiveness.

This common marketing pitfall is reminiscent of another I previously blogged about: Staying on the Right Side of the Line: Suggestive v. Descriptive.

So, what ever you do, don’t "describe" the brand and what it means, instead, explain and weave stories around all that it "suggests" or might convey through the exercise of one’s imagination.

  • http://it.linkedin.com/in/liguorilinda Linda Liguori

    I Stephen, what’s the D-Word? You mean D as “describe”?
    I try to convince my clients not to use descriptive names, that generally have more limits than evocative ones, which are richer in meaning, much more memorable and distintive over the market, and finally, but never less important, with more chances to be disposable as trademark.
    Linda

  • http://www.duetsblog.com/steve-baird.html Steve Baird

    Hi Linda,
    Yes, the D-Word is “describe,” or another form of the word (“descriptive” or “described”). You’re giving good advice to avoid use of descriptive names. The additional point I was trying to make is that even when a brand owner comes up with what might not be considered a descriptive name, they can shoot themselves in the foot by explaining the meaning of the name using forms of the word “describe.” For example, when Smashburger says in ad copy, “we literally smash 100% Angus beef . . .”

  • http://it.linkedin.com/in/liguorilinda Linda Liguori

    I Stephen, well, sometimes it’s just me to suggest the client to be Descriptive (D-word!!!!) in a tag, or add. Being descriptive anywhere else (not in the strongest element of the identity, as the name is) as the power to get him sure and comfortable, and also to complete the whole communications adding some more information about the product or the corporate. This obviously frees the name from the descriptive duty that the name should not have.
    Linda