The D-Word: What Ever You Do, Don't "Describe" Your Brand!

Posted on February 11, 2010 by Steve Baird

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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Bridging the Brand Consultant-Client Divide

Posted on September 15, 2009 by Guest Blogger

From My Cousin Vinny:

Vinny Gambini: I object to this witness being called at this time. We've been given no prior notice he would testify. No discovery of any tests he's conducted or reports he's prepared. And as the court is aware, the defense is entitled to advance notice of all witnesses who will testify, particularly those who will give scientific evidence, so that we can properly prepare for cross-examination, as well as give the defense an opportunity to have his reports reviewed by a defense expert, who might then be in a position to contradict the veracity of his conclusions.

Judge: Mr. Gambini?

Vinny Gambini: Yes, sir?

Judge: That is a lucid, intelligent, well thought-out objection.

Vinny Gambini: Thank you, sir.

Judge: Overruled.

Not fair. That’s just how it feels sometimes.

You believe you have a sound position, a fine strategy or a winning campaign, all backed up by solid arguments. But then you’re overruled. And you’re left shaking your head and saying to yourself: “This is a winner. Why don’t they get it?”

I’m sure that’s how brand strategists and consultants, whether internal or external to an organization, feel at times when their proposals are rejected. In fact, I know that’s how they feel. I’ve been there.

I’ve never sat on the agency side, but I know they’ve been there too.

On blogs, discussion boards and in conversations I’ve had with professionals working inside and outside of organizations, it’s not unusual to hear rants about bonehead clients.

“They don’t know what they’re talking about.”

“They’re too scared to change.”

“They think they know more than us. We’re the experts, but of course they know best!”

Look, I get the frustration. Consultants, for the most part, know their discipline and have a unique expertise their clients don’t possess. Otherwise, the client wouldn’t need the consultant in the first place.

However, let’s not forget that the internal brand steward or owner has a unique perspective as well. And it’s quite possible they may rightly reject or resist a consultant’s recommendations.

When it comes to the brand, brand stewards and brand owners don’t want to compromise. They’ve got too much on the line. As Janis Joplin said: “Don’t compromise yourself. You’re all you’ve got.”

Those who would choose to rant about client resistance, in my view, are missing an opportunity. And that’s to use the resistance and any reservations to better understand the client’s needs and then use that knowledge to help the client make the best possible business decision.

Pushing back is never the answer. Essentially, that’s exercising resistance in return.

You’ve got to be open to the possibility that you’re not right. And is that really such a stretch? After all, is anyone right all the time?

Instead, you should listen. You should listen carefully. And you should show that you’re open to the client’s concerns. After all, you want the client to be open to yours, right?

As a communications professional for over a decade, I’ve long listened to the complaints of colleagues about “difficult” clients who won’t accept their ideas.

Recently, I attended a writing workshop for communications professionals where, once again, someone belly ached about how their internal clients didn’t accept or respect their recommendations.

I greatly admired the workshop facilitator’s response, which went something like this:

We all have challenging clients. But we must not turn it on them; we must turn it on ourselves first.

You’re a communications professional. You’re supposed to be the expert at persuasion. You’re supposed to be wonderful at selling ideas and recommending change. You build and run campaigns to drive action. You need to look at your recommendations in the same way as any other campaign.

If you’re not having success with your clients, take a look at yourself and make sure you’re practicing the necessary skills to sell your solutions. Don’t be so arrogant to think it’s just the client’s problem.

I couldn’t agree more.

My view: present your case fairly and as well as you can. Then back off and listen to the client. Uncover the resistance and deal with it. In the end, you may just come up with even stronger solutions.

One more thought here. Whether you’re an internal or external consultant, invest time educating clients about brand building. Help them understand the nuances. Bring them into your universe. Help them understand the principles. Help them see what works and what doesn’t. Bring in speakers. Show them case studies. Ask them to participate in your strategic thought process with other clients.

In short, give them the knowledge and tools to better assess your recommendations. Bridge the divide.

In turn, brand stewards and owners also have a role in fostering a winning relationship. They can help the consultant understand their organization and its “whole story.” They can bring them into their thinking processes and marketing decisions. And, of course, they can be brutally honest about their concerns and reservations.

I’m sure many of you have experiences and good advice in how to bridge the divide in the consultant-client relationship. Why not share them here for everyone’s benefit?

—David Cameron, On Brands
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