Legalmatter

By: Brian J. Meli

It sounds like the setup to a bad punchline. But with the benefit of a former career in content creation in the advertising industry, and a current career in content protection in the legal one, it could be the title of my future memoir.

The fact is the marketing executive has always dreaded the call to/from the legal department, because it represents the demise of all that’s new, exciting and creative (i.e. everything that makes their job moderately interesting). As one former colleague put it, the advertising lawyer is the “No-Man,” named not so endearingly after his favorite word in the english language, as in “no, you can’t run that.” As far as your average brand manager or account director is concerned, a lawyer wouldn’t know a good creative concept if it walked up to him, introduced itself and then tried to strangle him with his Ferragamo necktie.

The lawyer meanwhile regards the marketing camp as a bunch of foolish risk-takers, naive to the unintended consequences of running a campaign without proper review. So who is right? Well, the fact is neither one would be doing his job very well if he wasn’t thinking along these lines. One of them gets paid to define the limits; the other to push them.  The question is: is there ever a time when the two can find common ground?  The answer: perhaps.

This interdepartmental head-butting takes many forms, but one of the most typical is the following: Management comes to the marketing department, or ad agency, with a flashy new product or service line that’s going to revolutionize business and change the world forever.  Let’s call that product or service line “PS”. Management wants the marketing people to come up with a catchy name for PS; one that it can put ungodly amounts of money behind and shamelessly promote as the best thing since the rolling suitcase.

So the marketing people put their heads together over many weeks. They enlist the help of an ad agency, whose creative teams work their magic. They throw strategic resources at it, using quantitative research and focus groups to justify their decisions. And eventually they arrive at a name that will instantly tell the consumer what PS is and how it’s going to make their lives dramatically better. Not only that, but it’s going to say it in a way that’s memorable and easily recallable. In short, they develop the perfect trademark. The problem is, the perfect trademark from a business standpoint isn’t necessarily the best from a legal one.

In the legal world all trademarks are not created equal, but rather they fall into one of five categories that reside along a scale ranging from unprotectable to highly protectable based on the marks distinctiveness. The more distinctive a mark therefore, the more legal protection it’s afforded.

The least distinctive of the five categories is the generic mark. Names like “dishwasher,” “cleaning solution,” or “financial services,” that merely state the category or type of product or service and nothing more are generic and cannot be trademarked. Thankfully though, advertisers aren’t lining up to introduce their shiny new product as “our shiny new product.”

A little higher up on the distinctiveness scale, but still relatively weak, are descriptive trademarks. These are marks that, like the name suggests, describe a product or service, or a function the product or service performs. Examples of descriptive marks are “Park n’ Ride,” “American Airlines,” and “Power PC.” Descriptive marks can be protected, but it’s more difficult to secure that protection, and most trademark lawyers advise against using them, if possible.

In the middle of the scale are suggestive marks. Suggestive marks, unlike descriptive ones, suggest or hint at what a product or service does without actually conveying it outright.  In other words, they require some thought or imagination on the part of the consumer to determine the nature of the goods. The classic examples are “Coppertone,” “Burger King,” and “Greyhound.”

The last two categories are considered highly distinctive, highly protectable, and therefore highly preferable among lawyers. They are arbitrary marks and fanciful marks. Arbitrary marks are marks with names that, while they may not be distinctive in and of themselves, have no connection or correlation to the product or service they identify, and therefore they become highly distinctive by context. For example the marks “Apple” and “Lotus,” while generic if used to identify a fruit or a flower, become arbitrary when attached to computers and software because they have no correlation whatsoever to these products.

Fanciful marks meanwhile, the strongest of all trademarks, are words that have no pre-exisintg meaning at all. They’re simply made up. They neither describe what the product is, nor suggest what it does. “Kodak,” “Exxon” and “Xerox” are all examples of made up words that have been made into fanciful trademarks.

As you’ve probably recognized by now if you make your living in marketing, the more distinctive a potential trademark becomes, the less it cues a buyer into what it actually does or how it works, and the more work consumers must do for themselves. In other words, the stronger a trademark is legally, the less it communicates a benefit; setting the stage for the aforementioned showdown between marketing and legal.

But something interesting has been happening lately that’s making this assumption less and less true. Counter to traditional wisdom, advertisers, whether conscious of the legal implications or not (I tend to think not), are beginning to use arbitrary and fanciful marks with more regularity.

The evidence is admittedly anecdotal, and the reason behind it is anyone’s guess, but words and phrases that have no discernible correlation to the products they identify are cropping up everywhere. Some of it could be explained by the flow of ad dollars away from industries that have traditionally placed a premium on products that say what they do and do what they say (packaged goods and appliances) toward industries that are as well known for expanding the english vocabulary as they are for their large advertising budgets (pharmaceuticals and tech). Or it could be that with competition for eyeballs as fierce as ever, and innovations in message and content delivery coming seemingly every week, advertisers are having to get more and more creative with their product names to get noticed.

Whatever the reason, it’s becoming apparent that unique, unusual and disassociated trademarks are becoming just as commonplace as descriptive, expressive and illustrative ones. Now for every “Rubbermaid,” “Craftsman,” or “Cuisinart” (descriptive/suggestive marks) you come across, you’re just as likely to find a “Verizon”, “Amazon”, “Hulu” or “Spotify” (arbitrary and fanciful marks). Disruptive names, it would seem, are gaining equal traction with descriptive ones.

While this move away from descriptive marks could be a temporary trend, it’s noteworthy because of its potential to lead to fewer internal conflicts among advertisers and their agencies. If advertisers are developing trademarks that their lawyers are approving on the first pass, this should translate into lower costs, and a faster, more streamlined path to market.

But whether current trends hold or not, two truths will likely always remain. Lawyers will never stop spotting problems, and marketing execs will never stop seeing lawyers as part of them.

The content of this blog is intended for informational purposes only. The information provided in this blog is not intended to and does not constitute legal advice, and your use of this blog does not create an attorney-client relationship between you and The Law Firm of Brian J. Meli. Under the rules of certain jurisdictions, the material included in this blog may constitute attorney advertising. Prior results do not guarantee a similar outcome. Every case is different and the results obtained in your case may be different.