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Some Subtle Stories Make Great Trademarks

Posted in Advertising, Articles, Branding, Look-For Ads, Loss of Rights, Marketing, Non-Traditional Trademarks, Trademarks, USPTO

One of my passions is to find common and favorable ground between legal and marketing types.

One of the readings during week three of Seth Godin’s intensive altMBA workshop reminded me of a great example to illustrate how a valid marketing goal can align with strong legal protection.

An excerpt from Seth’s All Marketers are Liars book was part of the reading material for a project on How Organizations Change, and this portion of that excerpt made me think of trademark types:

Great stories are subtle. Surprisingly, the less a marketer spells out, the more powerful the story becomes. Talented marketers understand that the prospect is ultimately telling himself the lie, so allowing him (and the rest of the target audience) to draw his own conclusions is far more effective than just announcing the punchline.”

Trademark types can learn a valuable lesson here about the protection of traditional trademarks: Subtlety can yield immediately protectable, inherently distinctive and inherently strong marks.

We’re talking about the difference between suggestive marks on the one hand, the favored hand, and descriptive marks or generic terms on the other hand, the less favored trademark hand.

Let’s keep in mind though, when we’re operating in the realm of non-traditional marks, subtlety may not be your friend, as the story told there needs to be far more blunt, direct and obvious to build and enjoy trademark rights.

In searching our vast content on DuetsBlog, I’m reminded of something similar I wrote more than seven years ago now, and I’m not sure I can say it any better now, so here it is, again:

“We have spoken and written about not “hitting the consumer over the head” in the context of naming and placement on the Spectrum of Distinctiveness, instead, encouraging the use of suggestive as opposed to descriptive names and marks, but, let us not forget, there is a trademark paradox that does appear to reward use of a blunt instrument, called look-for advertising, at least when it comes to developing trademark rights in certain non-traditional marks.”

So, some subtle stories told in a name can make powerful trademarks with a broad scope of immediate protection. And, some will still require the help of an obvious and blunt instrument.

The key is knowing the difference and when each approach is required. My fear is that the USPTO’s growing obsession with failure to function refusals (here, here, and here) and mere information refusals will begin to spill more prominently into traditional trademarks?

Does anyone else see this happening before their very eyes?

In other words, to please the USPTO, are we needing to move toward being more blunt about whether even a traditional word mark is actually designed to perform as a trademark?

Let’s hope not.

Oh, and by the way, I was speaking above with subtlety about being past the half-way point (the dip) in Seth’s altMBA workshop, so I’ll be blunt now, it is amazing, it is transformative, do it!