This article is for designers and creators who are looking to build or maintain a successful brand. Imagine this:
A guy walks into an IP lawyer’s office and says, “Hey, Mister, I just had a fancy website made for my new business, and now I need you to trademark it for me.”
Frowning, the lawyer looks at the fancy site and asks the gentleman, “Is your name Paul and does your business sell popsicles?”
The man replies, “That’s right, Paul’s Popsicles, just sings doesn’t it? I don’t want anyone else being able to copy me.”
The attorney starts in, “Well, sir, there are several layers of intellectual property within a website, and specifically concerning your name, it may be difficult to trademark-
“Now look here, four-eyes*, I just spent $20k on that site and the domain www.paul_s_popsiclesusa.com was available, so I know it’s the only one out there…”
(*Disclaimer: I’ve only actually been called “four-eyes” by a client once.)
This little scenario is not so different from situations we encounter on a weekly basis.
A young company or existing company with a new branding scheme or product or service launch invests considerable time and resources into a name/logo/slogan/scheme with a branding and design firm — and only then consults an intellectual property specialist to evaluate its new investment for freedom of operation and protectability. There are only so many ‘Paul’s Popsicles’ and ‘ChevroLetsRace’s we can stomach, and so we’ve decided to launch a series of digital fireside chats, aka tooling-around-on-your-phone-in-the-café-line blogs written directly for our designer friends as general reference tools for IP considerations.
One of the most difficult tasks can be helping your clients generate strong trademarks when developing new business names, logos, or products. Too often, new companies pick these names according to what would seem easy to advertise, which may not align well with trademark registrability. After all, if your client’s name is Joe McDonald and Joe sells hotdogs, isn’t the best marketing approach to shorthand his jumbo dog restaurant chain McDonald’s? Or what about that tech team developing OSX tools, wouldn’t it be catchy to brand them AppleApps?
Welcome to the wonderful world of trademarks, where IP attorneys use sexy legal jargon like ‘dilution’, ‘John Deere multi-factor balancing test’ and ‘specimen’. But don’t fret, we at RVL® are developing simple reference tools to help you understand trademark considerations at a high level when developing assets for your clients. One way to increase your trademark EQ is to remember the acronyms RAD, SAD, and MAD, and their importance along a continuum of trademark strengths.
Wait, what are trademarks again?
Trademarks are symbols that represent your client’s business reputation and identify their brand. The symbols can be words, slogans, and phrases. Trademarks can also be logos, sounds, scents, packaging, font styles, and even a definitive color scheme associated with a business. Think the brown color associated with UPS, the pink associated with Owen Corning’s insulation, the MGM lion’s roar, the lettering on Coca-Cola products, and NBC’s peacock symbol.
The strength of a trademark lies on a spectrum of sorts and largely depends on how closely associated the mark is with the product. For example, revisiting Paul and his popsicles, “Paul’s Popsicles” is about as descriptive as you can get — therefore, it’s an extremely weak mark (or as we call it, MAD). Let’s identify some RAD, SAD, and MAD marks are why some are stronger than others. Feel free to download and use this infograph as well.
RAD – Random, Arbitrary, and Disconnected
The acronym, RAD, stands for Random, Arbitrary, and Disconnected. Examples of this may include the marks associated with Amazon, Google, Uber, Pepsi, and Exxon. Some of these marks are terms that companies invented for the sole purpose of functioning as trademarks, while others are formed from root words or words not as commonly known or used by consumers. Because these names are so unique, they are deemed “distinctive” and can easily become famous. Thus, the companies who own them can tremendously limit others from using their names commercially for any types of product or service.
A random trademark is easy to identify because it does not mean anything until the company relates the mark to its good or service. The company advertises this mark to the public to help consumers understand the link between it and the company’s product or service. Courts grant random trademarks the highest degree of protection.
Random marks bear absolutely no resemblance or relationship to their underlying products. For example, consider marks such as Kodak , Polaroid, Starbucks, and Haagen Daz. Thanks to the advertising done by the companies who own these marks, we associate Kodak with film, Polaroid with cameras, Starbucks with coffee, and Haagen Daz with ice cream. The distinctiveness of these marks generally affords the companies who own them the broadest scope of protection against third-party use.
Arbitrary marks use words that enjoy a common meaning in the English language — but are used in connection with goods or services that are unrelated to that meaning. Courts consider these marks highly distinctive in identifying and distinguishing products because their meaning is disconnected from the goods they represent.
Of course, since the meaning differs from the original word, a company must advertise to help consumers learn to associate the mark with its goods or services. Trademarks like Apple and Camel demonstrate arbitrary marks that have acquired associations with computers and cigarettes. Apple makes a strong trademark because the public does not naturally associate the fruit with electronics like computers, tablets, or cell phones. Camel also has become a strong trademark because consumers would not ordinarily associate the animal with cigarettes.
Since trademarks fall on a continuum, arbitrary marks rank below random marks due to their alternative use in the language. Thus, while arbitrary trademarks are inherently distinctive in their fields, they do not enjoy widespread protection outside of their fields due to common use in the English language. Sometimes, the word can sound alike but be spelled differently and still be accused of trademark infringement. For example, Toyota learned this when it planned to use the word “Lexus” for a line of luxury cars and got sued by Mead Corporation, which owned the trademark to “Lexis,” which is part of the name of the company’s legal database. In that case, the Second Circuit decided “Lexis” was not a strong mark outside its field due to its common use in the English language.
Companies should consider using strong marks that afford the highest level of protection from third-party use as possible. Marks that fall into the RAD (Random, Arbitrary, and Disconnected) category, combined with solid advertising campaigns, allow companies to build brands that are easily recognizable to the public. Thus, if a company decides to market Prius washing machines, courts would be more likely to find infringement even though the owners of the Toyota Prius mark only sell efficient little cars and have yet to venture into the appliance market. A consumer could think “Hey, Toyota is selling hybrid washing machines,” whatever that would mean. Alternatively, Toyota’s brand of innovative hybrid machines could be watered down, no pun intended, by the scooping of its name for washing machines.
SAD – Suggestive, Alluding To, and Directional
The acronym, SAD, stands for Suggestive, Alluding to, and Directional. Trademarks belonging in this category include the Whirlpool washing machine, Restoration Hardware, 31 Flavors, Greyhound, U-Haul, and Coppertone. These marks are not as strong as RAD marks because they are more descriptive of the products and services sold; in other words, there is a link between the name and the product or service.
Subtle in nature, suggestive marks refer to particular characteristics of the underlying products — but they don’t specifically describe the goods. Consumers must exercise their imaginations to connect the dots. For example, Coppertone suggests sun tanning lotion, but it does not really describe the product. Likewise, U-Haul suggests transportation where consumers can haul their own belongings, but it does not necessarily describe the service. Consumers still have an “a-ha” moment to a certain extent when they realize the connection between the marks and the associated company.
Suggestive trademarks do provide some advantages to companies despite being weaker than RAD marks. For example, there are marketing and messaging advantages because consumers more readily make connections between the mark and the product or service it provides. The popularity of these marks lies in the fact that clever marketing can be used to make consumers connect the dots between the marks and the products. Once consumers make that connection, suggestive marks may seem easier to remember.
Overall, trademarks that fall within the SAD (Suggestive, Alluding to, and Directional) category may be a good choice for some companies, despite being weaker than random marks. After all, if an appliance company decided to try to market Coppertone stoves, courts would likely find this infringement due to Coppertone’s strong association with sun tanning lotions. It would not matter that the owners of the Coppertone mark have not ventured into making stoves.
MAD – Merely Accurate and Descriptive
The acronym, MAD, stands for Merely Accurate and Descriptive. Names and logos in the MAD category may seem like good alternatives because people can understand exactly what the trademark is marketing. However, these marks lack the inherent distinctiveness of marks that fall into the RAD and SAD categories.
Descriptive marks (as the name would suggest) provide a description of the product or some important part of it. That important part could include an ingredient, quality, function, feature, or any characteristic of the good. Because of this descriptiveness, these marks do not enjoy initial protection under trademark law. Unlike suggestive marks, descriptive marks do not require consumers to use their imaginations to reach a conclusion as to the producer of the goods. The link is obvious. Importantly, for these marks to become protectable, they must acquire secondary meaning. Secondary meaning occurs when consumers perceive the mark as a trademark rather than its primary meaning — as you can imagine, this doesn’t happen often.
When considering new names, logos, and products, marketing professionals might advise their clients to tread carefully using terms in the MAD category. While these terms might make advertising a bit simpler and help consumers recognize the products, the bottom line is that these marks are weak. Because of their lack of distinctiveness, a lot of time, energy, and money must be expended to police these marks while trying to make them acquire secondary meaning.
The test for whether a mark has acquired secondary meaning is met when consumers associate the mark with a specific producer, not the underlying product. This usually takes at least five years of continuous, high-profile use. Some examples of descriptive marks that have acquired secondary meaning include Windows for windowing software, Nespresso for coffee pods, and American Airlines for air travel. Once this secondary meaning is acquired, these marks become protectable.
While secondary meaning makes these marks protectable, this can be a double-edged sword. Some marks in the MAD category can become generic over time if consumers misuse the mark as a generalized name for all similar goods. Well-known examples of such MAD marks that have become generic over time include Kleenex, Aspirin, Jacuzzi, Cellophane, and Xerox. Even the terms escalator, thermos, and trampoline were once privately-owned trademarks that fell victim to consumers using the marks to describe all similar goods.
Generic terms that accurately describe a product are much more difficult to trademark. For example, words like “clock” and “smartphone” are generic terms. Imagine if descriptive words like these could be registered as trademarks; no other producer of such goods could use these words to describe them.
Trademark law prevents giving any producer of goods an exclusive right to use words that “simply and accurately” describe a product. However, there is a bit of give here if you or your client absolutely have to use your chosen, descriptive name. A combination of generic words could afford protection to their combined use even if those individual words had to be disclaimed in a trademark application. For example, say Steve starts a home repair and remodeling business and decides to call it “Steve’s DoItAll.” Steve would have to disclaim “do,” “it,” and “all” in his application, but by combining the words into one word and using it in such a manner, courts might find that Steve’s mark did warrant protection. But, it’s not guaranteed.
We recommend that both you and your clients pursue the strongest trademarks that you possibly can within your industry or company. Of course, we recognize that each individual circumstance is unique, but the difference between a RAD mark and a MAD mark can truly be game-changing for a business (we’ve seen it happen).
Our main takeaways:
- Pursue a strong trademark that distinguishes your product or service from the rest by choosing a mark that is random or even suggestive of your product/service — but don’t opt for a “Paul’s Popsicles”
- Committing to a merely descriptive mark on the front end and then seeking protection is not ideal by any means — consulting IP counsel first on possible names (or even reading this article) is a better starting point
- Remember RAD, SAD, MAD
- Random, Arbitrary, and Disconnected (RAD) marks are the strongest & easiest to protect
- Suggestive, Alluding to, and Directional (SAD) marks are still afforded protection, but have a certain degree of association with the brand that could either be limiting or a marketing/messaging advantage
- Merely Accurate and Descriptive (MAD) marks make your IP attorney a bit, well, mad — they are difficult to trademark, and even more difficult to enforce