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Hey John! Watch Out For That Crowded Field

Insight February 16, 2011

When selecting brand names, it is important to think long term.  The more unique your brand, the greater protection it will be given by the courts and the PTO and the greater its value in transactional negotiations.

We all wanna be famous like John Lennon, don’t we?  Yet, did you ever walk into a crowded room and shout “Hey, John?”  Just what percentage of guys turned around in response, at least 10%, right?  Now walk into that same room and shout, “Hey, Wilbur!”  Far fewer dudes turn around in response.

A while back, I wrote about the Strengths of Trademarks, in which I mentioned that trademarks have varying degrees of strength, which determines their level of protectability.  Strength correlates to distinctiveness: the greater the distinctiveness, the stronger the mark.

Distinctiveness is determined both by the relatedness of the mark to the product or service being offered under then mark, as well as by the number of similar marks for similar products.  When numerous sellers of similar products use similar marks, those marks become difficult to distinguish.  We trademark professionals call this a “crowded field.”    If you have a retail store featuring party supplies, then PARTY is a weak mark (in terms of descriptiveness and commonness). Terms like CLASSIC, IDEAL, NATIONAL, and PREMIUM are used on  so many products and services, they are considered weak marks for most, if not all, goods and services.

When marks are used as commonly as these, it is reasonable to presume that consumers will rely on other factors to tell the product or services apart.  Just like our pal, John.  We refer to him by his full name: John Rooks,  or by how we know him: backcountry John,  by some feature or skill: engineer John. So what does being a “weak mark” mean?  A weak mark means the mark is afforded less protection by the courts and the PTO than a strong mark is.  It often is more time consuming and costly to enforce a weak mark because more evidence is required to prove infringement.

We all wanna be unique!  This is especially important when it comes to our brands.  When selecting brand names, be sure to think long term.  The more unique your brand, the greater protection it will be given by the courts and the PTO and the greater its value in transactional negotiations.