Hey, John! Watch out for that “Crowded Field!”

Posted by | February 02, 2011 | General | No Comments

We all wanna be famous like John Lennon, don’t we?  Yet, did you ever walk into a crowded room and shout “Hey, John?”  Just what percentage of guys turned around in response, at least 10%, right?  Now walk into that same room and shout, “Hey, Wilbur!”  Far fewer dudes turn around in response.

A while back, I wrote about the Strengths of Trademarks, in which I mentioned that trademarks have varying degrees of strength, which determines their level of protectability.  Strength correlates to distinctiveness: the greater the distinctiveness, the stronger the mark.

Distinctiveness is determined both by the relatedness of the mark to the product or service being offered under then mark, as well as by the number of similar marks for similar products.  When numerous sellers of similar products use similar marks, those marks become difficult to distinguish.  We trademark professionals call this a “crowded field.”  If you have a retail store featuring party supplies, then PARTY is a weak mark (in terms of descriptiveness and commonness).  Terms like CLASSIC, IDEAL, NATIONAL, and PREMIUM are used on so many products and services, they are considered weak marks for most, if not all, goods and services.

When marks are used as commonly as these, it is reasonable to presume that consumers will rely on other factors to tell the product or services apart.  Just like our pal, John.  We refer to him by his full name: John Rooks, or by how we know him: backcountry John, by some feature or skill: engineer John.  So what does being a “weak mark” mean?  A weak mark means the mark is afforded less protection by the courts and the PTO than a strong mark is.  It often is more time consuming and costly to enforce a weak mark because more evidence is required to prove infringement.

We all wanna be unique!  This is especially important when it comes to our brands.  When selecting brand names, be sure to think long term.  The more unique your brand, the greater protection it will be given by the courts and the PTO and the greater its value in transactional negotiations.

About Lara

Lara Pearson is a trademark attorney with Exemplar, where she also serves as the firm's Sustainability Steward. Lara's legal practice focuses on trademark and copyright law, including: intellectual property audits; trademark search & clearance; trademark and copyright registration & maintenance; intellectual property transfers; transactional work; and dispute resolution, including litigation when necessary. Lara primarily represents other social enterprises -- those leveraging their businesses and brands as catalysts for positive social and environmental change. Such businesses engage in CSR (Corporate Social Responsibility) to have a positive "triple bottom line" of people, planet and profit. As Exemplar's Sustainability Steward, Lara works with others in her law firm to measure and reduce the firm's carbon emissions and encourage engagement in social responsibility initiatives, including pro bono legal work and volunteering. Lara is a proud member of the Social Venture Network. Brand Geek is a member of 1% for the Planet and a Certified B Corporation, whose Incline Village office is certified under the regional Keep the Sierra Green program. Exemplar Companies is the most innovative professional services firm in the New Economy. Our unique, diversified expertise spans the disciplines of corporate law, business advisory, and capital/investment banking to better meet the needs of our high-potential customers. We have assembled a comprehensive suite of service to meet the complex issues facing companies in today’s challenging business environment. Our unique, holistic approach ensures the growth and success – and greatly increases the competitive advantage - of our customers. The Exemplar team is comprised of knowledgeable, highly skilled experts in a wide range of industries and disciplines. They work closely with our customers to provide trusted advice, incomparable support, expert guidance and the ultimate competitive advantage as they accelerate their businesses and position themselves to transform industries.

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