In a recent reader poll by Travel Market Report, the subject of branding and trademark/name protection was ranked high in interest by many readers. And indeed, it’s a complex subject involving common law, state law and federal law. I will discuss the broad elements of the governing rules in a series of articles, beginning here with an introduction to protecting brand names in the service industry we call “travel retailing.”
Brand names are valuable because they help consumers identify the source of particular services and ease their finding (or returning to) service providers that have developed reputations as providers of good experiences. They also reduce the potential for bad actors to prey on the good names of successful firms by appearing to be that firm when they are not.
Common sense then tells us that in order to serve the function of accurately identifying the source of services, the brand name of the business must have qualities of uniqueness so that it separates one firm from all others in the mind of the consumer. This is the purpose and essence of branding.
Name protection for products is obtained through trademarks; a “service mark” is simply a trademark for a service rather than a physical “good.” The law of trademarks is designed to protect the owner of such names from copycats and to give the advantage to the first user of what becomes a commercially attractive brand name.
Service mark protection thus attaches only to marks that are sufficiently distinctive that they identify the source of the particular service. Distinctiveness runs along a spectrum from marks that are generic, descriptive, suggestive and, finally, arbitrary/fanciful.
Generic marks are not protected at all because they simply describe the underlying service in ways that cannot distinguish one provider from another. Thus, terms such as “travel agency” or “tour operator” are plainly generic. Such names, by themselves, will not confer any right to exclusive use by one firm as against the others in the same business.
Descriptive marks identify the service in question but are not, by themselves, sufficiently distinctive to secure service mark protection unless they have acquired, and you have evidence showing, “secondary meaning.” Secondary meaning is a term of legal art that means the public associates the mark with a single firm rather than the service itself. Secondary meaning is not a particularly reliable method of securing trademark protection because it generally requires a showing of long-term use in commerce and significant publicity/advertising/other exposure to many consumers. If secondary meaning is never established, the brand, tradename or mark, though near and dear to the heart of the user and important to its business, may be vulnerable to use by other firms. And without secondary meaning, a descriptive mark cannot be registered with the federal Patent and Trademark Office.
“Sharp” is an example of a descriptive product mark that has secondary meaning for production of television sets. One common misconception is that adding a proper name to an otherwise generic mark can achieve trademark protection. “Smith Travel” is an example of a non-protectable service mark unless the user can establish secondary meaning. Doing that with a common name is very difficult.
The third category of marks, that get a high degree of trademark protection, are?suggestive marks. These imply a characteristic of the underlying service but do not specifically describe the service.? Coppertone is a typically used example of a suggestive trademark that suggests sun-tan lotion without actually describing the product. A mental leap of sorts is necessary to connect the trademark to the product.
The final category is fanciful/arbitrary marks. Fanciful names are invented for use as a service mark to identify certain services with a particular firm. They do not describe anything in the real world (think “Trivago” or “AMEX”). An arbitrary name is a term with a common meaning or usage, but that has no connection to the service to which it is attached (think “Apple” for computers). The sole purpose of such names is branding, and they receive the strongest trademark protection because they most powerfully connect the brand name with the provider. These names refer to the producer of the types of services described in the service mark registration. It is thus common that a fanciful name may be used by different firms in completely different industries where such usage will not result in confusion for consumers as to what firm the name identifies.
You now know the types of service marks and generally the extent to which trademark protection is available for them. In the next installment, I will discuss how full protection can be secured and also how protection can be lost.