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Last week we explored how at least some of Seth Godin's trademark advice is a bit dated.

This week, let's take a close and careful look at his advice concerning trademark registration:

Some lawyers will get all excited and encourage (demand!) that you register your trademark. This involves paying a bunch of money, filing a bunch of forms and earning an ® after your name instead of the ™. While the ® does give you some benefits by the time you get to court, it doesn't actually increase the value of your trademark. And you can wait. So, when you come up with a great name, just ™ it.

Actually, I've never met lawyers who "demand" that their clients register their trademarks. Strongly recommend, yes, and for good reason, yes, but demand, no. That is not a lawyer's role. Even inexperienced trademark lawyers know to explain the costs, benefits, and associated risks of pursuing or foregoing federal registration. Unfortunately, Mr. Godin appears to misapprehend all three.

We already have discussed the many and substantial benefits afforded to those who federally register their trademarks. These go well beyond what you have, "by the time you get to court." Indeed, in some instances, having the ® will avoid the need to go to court altogether, since the registration is actual proof of the claimed right and may be enough to move a squatter off your mark without even resorting to formal legal action. Good luck with that, if all you have done is "just ™ it." Moreover, in other instances, having the ®, can be the difference between continuing to use or expand the use of your trademark and not, so this is certainly more than "some" minimal benefit.

As to the risks, those who don't appreciate the value of a federal registration or the importance of filing prompt registration applications likely aren't aware of or don't understand this significant risk:

Now, some realize the importance of the protection, but in an effort to save or defer cost, they have considered holding off on filing a federal trademark application -- to see how the product does -- before making a final decision on the filing. If you or someone you know falls into this category, while I sympathize with your and their efforts to manage a tight budget, understand another risk that goes a step further than the risks already covered in the above-linked Create Magazine article.

To do so, after you have conducted the appropriate due diligence to clear use of the new name and mark, ask yourself how long it will take to get your product with the new name and brand in the stream of commerce and in the marketplace. Without the important benefit of constructive use relating back to the filing date of the federal trademark application, it is important to realize that your investment in preparing for the product launch may be lost altogether if another person or company files an intent-to-use trademark application, for a confusingly similar mark, even one day before you get to market with your newly named product. If this happens you and they may very well "see how the product does" with another name.

Now, as to the issue of cost, given the substantial benefits conferred and the substantial risks avoided, when those are recognized and understood, the financial cost of a federal trademark application seems well worth the $275 governmental filing fee toward the creation of an intellectual property asset of national scope.

Last, as to Mr. Godin's assertion that federal registration "doesn't actually increase the value of your trademark," he is simply wrong, so there you go. It stands to reason that national rights are worth more than local rights. Ask any party to a franchise agreement or even their informed bankers who loan money based on them.

Without a federal registration, rights are limited in geographic scope to those areas of operation where the use has been substantial enough to generate common law trademark rights. With a federal registration the trademark owner is deemed to have used his or her mark in every sliver, corner, and county of the U.S., as of the filing date, even though the trademark may never blanket the country with their goods or services. So, one need only consider the world of franchise relationships and trademark licenses to appreciate the enormous power and value a federal trademark registration brings to the table and to the bank.

Some other time, I'll explain some of the reasons for using the ™ symbol, but suffice it to say for now, doing so confers no legal rights. So, "when you come up with a great name" and you want to use it and have the best chance of expanding that use over time, as your business continues to grow, don't "just ™ it", instead, seek federal registration at the earliest possible opportunity.

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Last week we blogged about the dreaded D-Word and how some marketers unwittingly undermine trademark rights in a brand name by explaining that the name "describes" or is "descriptive" of the goods or services sold under the brand.

We also have blogged about the danger of "taking a suggestive name, mark, or tag-line, and using it descriptively in a sentence on labels, packaging, ad copy, or the internet," because doing so "unfortunately can move it to the left (and wrong) side of the line and render it merely descriptive." This particular marketing pitfall was illustrated by probing the Gatorade label last May.

Today, we continue the similar theme of common marketing pitfalls that can render an otherwise strong and suggestive mark merely descriptive, and weak, if protectable at all.

Icon Burger Development Company launched the Smash Burger franchise a couple of years ago, and it recently found its way to the Twin Cities. Great food and concept, by the way. The founders are really on to something here, but the marketing efforts have a few, let's say, trademark issues.

Smash Burger, at the outset, had the potential to be a strong and smashing (i.e., wonderful, impressive) brand with strong and inherently distinctive trademark rights. Indeed, the U.S. Trademark Office registered a number of different SmashBurger variants, each without a showing of acquired distinctiveness or secondary meaning, here, here, here, and here. It has even federally registered the word SMASH standing alone, and the tag-line: SMASH. SIZZLE. SAVOR.

When your unique and valuable brand name is SMASH BURGER, and you want to own and continue to own rights in SMASH, and related SMASH marks, best not to use "smash" and "smashed" as words to describe the type or name the category of burgers you sell. For example, the website explains why people love SmashBurger: "Fresh, never frozen 100% Angus Beef smashed, seared and seasoned on the grill." As part of the SmashBurger story, it is told: "We start with 100% Angus Beef smashed, seared and seasoned on the grill . . . ." The homepage further reads: "Smash Burger is a great new burger place for a better burger made with 100 Angus Beef that is smashed, seared and seasoned on the grill."

Perhaps most devastating from a trademark perspective, the SmashBurger drink cups read: "Where SMASH means we literally smash 100% Angus beef at a high temperature to sear in all the juicy burger goodness":

Sounds good, if you're dining, but ouch, if you're the patty, or perhaps a trademark type. It appears the Examining Attorney never combed the SmashBurger website, as many will do, in search of descriptiveness admissions that can and will be used against the brand owner and trademark applicant. It remains to be seen whether these issues are raised at some point in the future.

When marketers are tempted to use their brand name in a descriptive way, my suggestion is to consult a thesaurus in search of alternate terms to use in copy that share the same meaning as the branded and trademarked term. This helps avoid a trademark invalidity challenge by the Trademark Office or competitors. 

Would the effective marketing story be lost if words like "smacked," "pounded," "pressed," "crushed," or "slapped" were substituted for "smashed," and terms like "smack," "pound," "press," "crush," or "slap" were substituted for "smash" in the copy, leaving SMASH for use only as a trademark and brand name? I'm thinking that consumers will exercise a little imagination and still get the marketing point, without doing harm to the trademark.

What do you think?

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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.

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