The trademark laws are meant to protect business entity. It takes years and a significant amount of resources for a company to develop a strong brand that is largely acceptable in the market. Top global brands such as Apple Inc., Coca-Cola, and Samsung are worth billions of dollars because of the heavy investment the relevant companies have placed in their promotion. One of the biggest problems of counterfeiting that trademark laws seeks to fight is the possible loss of value of a given strong brand. Most of the counterfeited products are of poor quality. When a customer chooses to purchase a specific brand over others, one of the defining factors is quality. They feel cheated. The main problem that emerges from such a scenario is that such customers will not only avoid the company’s products but will also influence others against the brand.
It is unfair for a company that has embraced business ethics and has spent millions of dollars to promote its brands and produces quality products to be subjected to such practices. It may take a long time and heavy investment in promotion to win back customer’s trust. The existence of trademark laws ensures that such practices are avoided in the modern business environment. Companies or individuals found to be engaging in such unfair practices are often subjected to stiff penalties to discourage others from the same and to compensate the aggrieved party. The ability of the aggrieved company to take the aggressor to court and prove that its trademark name was used in selling substandard products may help restore the faith of customers. The company will be able to explain its position, the unfortunate occurrence, and measures put in place to avoid similar situations in the future. It becomes easy to repair the damaged image of the brand in the market.
It is important to understand what can be protected under the trademark law. These are terms meant for general classification of goods that cannot be registered and be protected in the United States trademark laws. For example, soap is a general term that includes all types of detergents sold under different brands. It is not possible for a business entity to claim ownership to such a name that defines a variety of products. It is necessary to develop a unique name to define a company’s image in the market. The law can only protect a trademark that is unique and cannot raise a conflict with the current or possible future companies in the same industry. When looking at what can be protected under the trademark laws, it is important to look at the following areas:
1. Generic Trademarks
Success in branding is the desire of every company in the global business arena. Companies in the United States and all over the world are embracing various strategies to ensure that they make their product as popular in the market as possible. However, it is important to note that sometimes that high level of success can be counterproductive. Some brand name may become so common that they are used to describe all products in that category despite their manufacturer. Good examples include Aspirin, Cellophane, and Escalator. These were extremely successful trademarks that became generic names. It reached a moment where all products in their categories used the same name. Consequently, Aspirin lost its trademark in 1919, Cellophane in 1912, and Escalator in 1900. The process through which a company loses its trademark is referred as genericide. In such circumstances, it may force the affected company to find an alternative name for its brand and products as the law ceases to protect such a generic trademark. Benefits that were previously associated with such a powerful brand such as a strong customer base, high profitability, and brand value are lost in the process.
It is important for a firm to ensure that its brand does not become generic. Omo, a washing detergent, gained massive global success in Asia and African countries that it almost achieved the generic status. However, the company was able to take appropriate measures to avoid such eventualities. Coca-Cola brand also achieved such a massive success in the same market and North America that the name almost became the identification of all cola products. However, these companies were able to fight off the danger of losing their trademarks. These two companies used the same strategy to protect their brand name. They added a descriptor after the trademark. Instead of just using the name Coca-Cola, the company used the Coca-Cola Company as its trademark. This was a reminder of the existence of other cola products. The Coca-Cola Company was just one of the many companies offering cola products. The company was able to maintain a highly popular trademark without letting it become generic. More recently, Google Inc was almost losing its trademark become it was rapidly becoming generic.
People were using the term ‘Google it’ instead of ‘search it in the online platform’. For fear of the name becoming generic, the company made two major moves to protect its trademark. It developed a parent company, Alphabet Inc., under which Google was to operate. The move was meant to ensure that if the company lost its trademark with Google, it would be left with an equality strong brand in the market. Secondly, the company started dissuading its customers from using the term Google it. Instead, its commercials promoted the use of the term ‘search it in the Google’ to distinguish the word search from Google. The popularity of Google is still growing as the most preferred online search engine and only time will tell if it will be able to protect its trademark from becoming generic. In the case August Storck K.G. v. Nabisco, Inc, it was ruled that marks devoid of any distinctive character may not be protected under trademarks laws.
2. Descriptive Trademarks
Descriptive trademarks cannot easily be protected under the trademark laws. Descriptive trademarks are defined as those using names that describe their products. In many cases, they are used as a promotional slogan when advertising a brand or a given product. When promoting its cola drinks, the Coca-Cola Company uses the slogan ‘obey your thirst’ for its Sprite sub-brand. The term has been used so often by the company that its mention evokes the thought of taking one of the company’s products. However, one can still use milk or tap water, products which are not offered by the company, to quench thirst. As much as the phrase has become closely associated with the Coca-Cola Company, this firm cannot register it under the trademark laws. It means that rival companies and those that operate in different companies can also use the phrase to promote their products. The essence of avoiding the protection of descriptive trademarks is because of their common usage.
Sometimes a company may use the word but in a misleading manner. For instance, it is common to find cases that firms describe their products as the best in the market. It is not possible to register a product with the name ‘the best option’. Even if the company offers the best value in the industry at the time, it is not guaranteed that its products will be the best forever. When a new company emerges that offers superior value, the name will lose its validity. The message it passes to customers will, therefore, be misleading. Even when a firm is keen on selecting a name that would give it an edge over its rivals, it is prudent to avoid trademark names which are descriptive. This approach of developing a trademark may leave a company name and brand exposed to legal challenge. To have such a name protected by the country’s trademark laws, a firm may need to modify it in a manner that makes it distinctive in the market. Zatarain’s, Inc. v. Oak Grove Smokehouse, Inc. is a case example of how a company can easily lose a descriptive trademark. Zatarain owned trademarks FISH-FRI and CHICK-FRI. Trademarks were challenged by Oak Grove as being descriptive and limiting other companies from using phrases such as fish fry and chicken fry in their advertisements. It was held that these two brands had no other secondary meanings and as such, could not be protected under the Lanham Trademark Act.
3. Suggestive Trademarks
The trademark laws may fail to protect a trademark that is established to be suggestive. Suggestive trademark is defined as a distinctive, but not descriptive, mark which does not describe a product, but suggests or references it, requiring consumers to exercise imagination to connect the mark with the product. The name suggests the quality or characteristics of products offered by the company. A good example of a suggestive trademark is Android, which refers to artificially intelligent user-interactive software. It is not possible for a company to have such a name protected under the trademark laws, as was established in the case of Abercrombie & Fitch Co. vs. Hunting World, Inc.. It was held that Smartphone from numerous companies such as Apple Inc. Samsung, and Nokia may fall into the category, and therefore, it is not prudent to have a single company enjoying such exclusive rights. However, some rare cases exist when a company manages to register a suggestive trademark that becomes fully protected by the country’s trademark laws.
Microsoft is a trademark name that suggests the nature of the product offered, microcomputer software. However, the name was registered when the concept was almost non-existence so it was not easy to envision a situation where another entity may challenge the name. However, as market forces continued to change and Apple Inc. developed its microcomputer software, Microsoft realized the vulnerability of its trademark and moved with speed to protect it from being declared a suggestive trademark. It introduced the term ‘corporation’ in the name to have Microsoft Corporation. The name is yet to face any serious legal challenge and is less likely to be subjected to such a problem because of the modification. It is necessary to avoid suggestive trademarks because they do not attract strong protection under the United States trademark laws. Some few cases of a company that enjoy protection exist, but it is an option that one should avoid if possible.
4. Arbitrary Trademarks
Some of the brands that enjoy strong protection under Lanham (Trademark) Act are arbitrary trademarks. These are names that have nothing to do with the industry or the product that a company offers. They are creatively chosen because of the unique meaning or attachment they have to the owner. Kodak is a name that has little to do with the filming industry. However, it is one of the brands enjoying protection from possible infringement both locally and internationally. Apple Inc’s operations have nothing to do with fruit production. The same approach of branding is embraced by Camel Oil and Shell gas stations. It is uncommon to challenge these trademarks.
From a marketing perspective, it may not be the most appropriate strategy for naming a brand because it may take them some time to associate the name with the product offered. However, when it is creatively developed, it can form a strong trademark that enjoys protection from possible infringement. It is important to note that even arbitrary trademarks may be subject to litigation if certain terms are breached. Apple Corps vs. Apple Inc. is a perfect example. Apple Corps, a multimedia corporation, came ahead of Apple Inc., an electronics company. Apple Corps took Apple Inc. to court for using a trademark that was already in active use. Apple Inc. was forced to make a settlement and promise to avoid the music industry. When the temptation to join music industry became too strong, Apple Inc. was forced to purchase Apple Corps trademark to avoid further legal battles. Such cases are common not only in the United States but also in other countries around the world.