“There’s been a dust up in town,” my mother told me on my last trip home. A local restaurant had started getting calls for reservations and customers wandering in looking for their newly formed competition. The customers were confused, as the two restaurants had similar names. This seems like a pretty straight forward trademark story, except there was an additional wrinkle – the only similarity between both businesses’ names were words describing the location of the businesses.
Our natural inclination is to choose a name that tells our customer what it is we are selling. For example, a diner located in Raleigh might want to call itself RALEIGH DINER. This tells consumers they are getting diner services in Raleigh. While there is some business sense to that, it runs the risk of preventing protection for that name.
One of the rules of trademarks is that generic terms, that is terms that tell you what something is, cannot become trademarks. For example, I can develop a new coffee machine, brand it COFFEE MACHINE, and spend millions of dollars advertising and promoting COFFEE MACHINE. I will not be allowed to stop other people who sell coffee machines from calling their coffee machines what they are – coffee machines.
Descriptive words, or words that describe what something is, are also not generally allowed to be trademarks. My RALEIGH DINER is geographically descriptive, it tells my customers that my hypothetical diner is located in Raleigh. While a descriptive term may, in some cases, eventually become a trademark, these marks tend to be weak and afforded a narrow scope of protection. Even if I could eventually trademark RALEIGH DINER, I will not be able to stop a competitor from simply calling their café the RALEIGH CAFÉ, nor would I be able to stop a competitor using NORTH CAROLINA DINER.
How, then, can a business provide a description of what it is selling while having a unique brand? One option is to choose a unique name and add the description as a tag line. For example, if my diner is a 24-hour establishment, I might call it MIDNIGHT OIL: RALEIGH’S DINER. Here, the name “Midnight Oil” does not immediately describe or identify what I’m selling; it could be a trademark. Another option is to choose a name that suggests, without identifying, what the products or services are. For example, the phrase “red lobster” brings to mind a lobster that is red. With a little imagination, however, consumers are able to connect RED LOBSTER with seafood, and then as seafood restaurant.
Working with a trademark attorney up front can help businesses avoid choosing names that might not be protectable, or that may result in a narrow scope of protection. By starting with a strong, unique brand, a company can also avoid the unpleasant situation of consumer confusion over the inclusion of similar descriptive or generic terms and protect their name as they build their business.