Recall the unexpected popularity of “On Fleek.” On Fleek became an overnight viral phrase after a young college student posted a snap chat regarding her freshly sculpted eyebrows. Before anyone could blink there were USPTO trademark filings for everything On Fleek, from makeup, clothing to catering of all things. The phrase was burned out. Often when a brand name becomes too popular or is associated with a hot topic or catch phrase the ability to protect it as a brand becomes challenging.
I love referencing the On Fleek phenomenon because just as it was a relatively strong trademark in that it was not at all descriptive of the products and services that most businesses provided, it became watered down. Too many businesses gravitated toward it and lessened its strength. Famous brands are given the ability to block other businesses from using their names even if the proposed service or product is not one they ever plan to provide under what is known as trademark dilution. In a recent Facebook live post I did, I stressed the importance of having an Trademark Lawyer as part of the brand strategy team to help craft the strongest brand possible and capable of as much protection as possible.
The USPTO does not allow any single business to claim a monopoly over words or phrases that are too generic or descriptive of the service or product being offered to the public but many times competitors get into scuffles over weak trademarks that just aren’t worth it. If too many are vying for it, it maybe time to rethink the brand altogether. The chosen words or phrases must be such that consumers can readily associate them with one company only (acting as a source identifier) in that consumer market without unfairly blocking other competitors from being able to easily describe their services or products. Just recently after a lengthy court battle, Louboutin was granted trademark registration of his signature red bottom sole. For many years Louboutin was blocked from such protection but the red bottom has become such a status symbol that most consumers do readily associated with the expensive shoe brand only. Copycats were inevitable. Which takes me to my next point…
Profits and recognition are the ultimate goals of any business. EXPANSION. But with popularity and expansion comes copycats or trademark infringers. One of my favorite visual artists, Artistic Nappy roots is known for her stunning natural hair visual art that she transformed in products of all kinds- earrings, dresses, shirts, book bags, leggings, shoes, shower curtains, etc. The list goes on. But unfortunately as her business grew so did the chance for infringers looking to make a quick buck. For every infringer she’d find and have shutdown contacting their web host, there would be another one popping and some were located in other countries. The unfortunate con of being a rightful trademark registration owner or even one with common law rights is that the trademark owner is responsible for policing their own mark. That includes sending cease and desist letters, pursuing litigation or sending takedown notices to whatever online platform hosting the infringer. While the USTPO will readily block a competitor from registering a competing mark, policing one’s mark can be a full time job in itself as the brand’s popularity grows. Big corporations such McDonalds have the ability to go after infringers and have whole legal departments dedicated toward that effort. Most small businesses just do not have the finances to do this beyond cease and desist letters. To minimize trademark infringement, aim for a brand name that isn’t at all descriptive of the product or service. Maybe even a brand name/logo that makes your head tilt in confusion and requires explanation. If the marketing is done correctly over time, consumers won’t even question the name. They are more concerned with the product or service being offered and that the customer service is top notch. Questions or concerns? Feel free to reach out to EJLee Law via Twitter @ejleelaw or Facebook EJLEE LAW Practice, LLC
***THIS POST IS NOT INTENDED TO BE SPECIFIC LEGAL ADVICE. ALWAYS CONSULT INDEPENDENT LEGAL COUNSEL FOR YOUR SPECIFIC SITUATION.