Selecting a Trademark and Creating A Brand Identity

When you create a brand identity, you should think of the trademark that you adopt to identify your product or service and distinguish it from your competitors’ products and services as one tool among others in the toolbox that you use to get purchasers to buy your product or service. Those other tools may include your advertising, how you display your product or service in the marketplace, and how you relate to your customers.

For example, if you are selling beer to men in their twenties, that sector of consumers who usually buy beer, you want to get their attention.  If sex is on men’s minds a good part of the time, then sex is probably a good way to get their attention and, therefore, beer ads frequently display very attractive women showing significant amounts of bare skin in close proximity to bottles of that frothy beverage.

If you are selling frozen pizza, television or print advertising stating that that product is as good as pizzeria pizza will likely bring your pizza to the buyer’s attention but it probably won’t close the sale.  Most pizza consumers who eat pizza out likely assume that frozen pizza is a pale imitation of the real thing.  Therefore, you will need something more to close the sale, to get them to buy your product.  Here, placing the product at the end of the aisle in the supermarket, introducing it at a discount, or providing coupons to the buyer will help close the sale.

And if the product you’re offering isn’t pizza but is instead a new automobile brand from a country that isn’t known for manufacturing automobiles that are sold in the U.S., say China?  Buyers will be justifiably concerned whether the Chinese, who have not been manufacturing cars for export to the United States as long as the Japanese, have the same level of expertise in doing so.  So, how do you get over that hurdle?  Your car make, in the beginning, will not have a good reputation.  It won’t have a bad reputation either, rather, it will have no reputation at all.  So what do you do?  You offer the car buyer a long term and comprehensive warranty on the car, promising to fix the car for free.  By doing this you can immediately tag the product with a brand identity, that of a manufacturer that stands behind its product.

Finally, how you relate to your customers is important.  Suppose you sell a commodity; cellular phone service or airline service, for example, where you have several competitors.  You can compete on price but, if you do so, you run the risk that a competitor will undercut your price and grab your customers.  Or you can make the experience of using your product more enjoyable.  In the case of both cell phones and airlines, one way to do that is to make television available to your customers as part of your product, as both Verizon and Jet Blue have.  However, if you leave your customers sitting in a jetliner for numerous hours out on the runway going nowhere, the entertainment offered by television will soon fade to black as may the goodwill that your brand has appreciated over the years.

Whatever you do to sell your product, you need to call it something.  In selecting a trademark, you need to pick a mark that others in your business are not using.  Otherwise your purchasers may buy your competitor’s product when they mean to buy your product or vice versa and more than likely your competitors will sue you.  Then you should pick a mark that will help sell your product.  Here, you can go two ways; you can pick a mark that describes a desirable feature of your product or you can pick an arbitrary or fanciful mark.

If you go with a descriptive mark, that mark will go to work right away, on its own, and help you sell your product.  For example, suppose you offer an allergy medication that doesn’t make you sleepy and you want to extend that brand to an allergy medication that you take at night that does make you sleepy and to distinguish between the two products you add P.M. to the brand name.  P.M. merely describes when you would take that medication, that is, at night, and therefore, that trademark would be a weak one.  From a marketing standpoint your adoption of such a mark would be fast acting and you could get a lot of initial bang for your marketing bucks;  it would not take a lot of advertising other than putting P.M. on your packaging to identify your product to consumers as a nighttime remedy.  However, because it would be a descriptive mark, your competitors could adopt the same or a similar mark and once this occurs, you will need to come up with some other marketing magic to convince customers that your product is better.

On the other hand, you could select an arbitrary or fanciful mark.  A fanciful mark would be a coined word such as Exxon.  An arbitrary mark would be a mark such as Apple which when it is used on computers or personal music players means nothing but has all the meaning in the world when it is applied to fruit.  Initially, when you select such a mark, it would have no immediate significance to consumers.  You would affix it to your product and display it in your advertising and it would, by itself, accomplish nothing in selling your product other than identifying that product as coming from you and not your competitors.  But use the other tools mentioned above to build a strong brand recognition for your product and once consumers recognize your product as working better, looking better or lasting longer than your competitors’ products, that mark will become easily remembered and your rights in it more readily enforced as a fanciful or arbitrary trademark is given greater protection by the courts not only against competitors using the same mark on the same products but against competitors using the same mark on related and, in some cases, if that mark becomes famous, unrelated products.

So what route should you take?  Should you select a descriptive mark for its immediate marketing benefits or a fanciful or arbitrary mark?  You decide, but here are a few examples of fanciful or arbitrary marks; APPLE, STARBUCK’S, GOOGLE, AMAZON, YAHOO, VERIZON, and here are some not so fanciful marks; GENERAL MOTORS, NORTHWEST AIRLINES, UNITED STATES STEEL, TOYS ‘R US.


The material on this website is for informational purposes only. It should not be considered legal advice and is not intended to create an attorney-client relationship. If you have questions regarding any material presented herein, we recommend that you consult an attorney. This web site and information presented herein were designed in accordance with Illinois law. Any content in conflict with the laws or ethical code of attorney conduct of any other jurisdiction is unintentional and void. I am a Chicago attorney practicing in the areas of trademark, copyright and information technology law as well as general corporate law. Formerly a trademark examining attorney with the United States Patent and Trademark Office, I have been in private practice since 1987 representing clients in a wide variety of industries, including the consumer products, financial services, information technology and entertainment industries. You can contact me at, by phone at 773.934.5855 or by mail at 417 S. Jefferson St., #304, Chicago, IL 60607 USA
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