29
Jul/02

Can't you just make up a new name, Mr. Disney?


If owners of the world’s 10 most valuable brands approached trademark lawyers today to clear those marks, doctrinaire lawyers might advise them to avoid over half of them.

Interbrand and Businessweek have come out with their annual discussion of the world’s most valuable brands.  One canon of trademark law is that there is a scale of registrability.  Arbitrary, coined and suggestive terms  are inherently registrable.  Descriptive terms, including geographically descriptive terms are registrable only upon proof of acquired distinctiveness, as are comon surnames.  Trademark lawyers (and brand consultants) advise clients to choose coined or arbitrary terms (while marketing folk advise co-opting the generic term ;-)), and give EXXON, KODAK and XEROX as exemplars of the form.  I thought it would be a worthwhile exercise to look at the ten most valuable brands in the world and analyze them on the registrability scale.  At least half of the marks are not “inherently registrable” and likely would require evidence of acquired distinctiveness.

1.  COCA-COLA – When derived, this was a suggestive term, alluding to the cocaine.  COCA-COLA and COKE have functioned as arbitrary marks for the last century.

2. MICROSOFT – Suggestive, referring to software for microcomputers.  WINDOWS was intiially descriptive (and those involved in the LINDOWS case would argue, still is).

3.  IBM – Acronyms for descriptive terms tend to be viewed as descriptive as well.  International Business Machines describes, er . .

4. GE – Same as above, for general electric products.

5.  INTEL – Intel is not a dictionary word, although those of us employed by spy agencies use it as a noun.  Strictly speaking, this is a suggestive mark for intelligent products.

6.  NOKIA – I cannot find a source for the meaning of NOKIA, although the founder (not named Nokia) did name the company that when it started as a logging company in 1865.  It is rumored that Nokia received favorable treatment in the U.S. market at first because people assumed that NOKIA was Japanese and therefore the product must be good.  It certainly functioned as an arbitrary mark in the U.S. at least.

UPDATE: Alexander Svennson of Icannchannel.de confirms that Nokia was the name of the logging town where the domaony was founded.  When applying today, Nokia would have to represent that the town was not primarily known for logging.

7.  DISNEY – Founder’s surname.  The Examiner would do a phone book test to determine if it were a common surname and reject it if it were.

8.  McDONALDS – Founders’ surname (not really – founder sold these guys equipment, then bought them out).   Definitely a common surname.

9.  MARLBORO – I am assuming that this is a geographically descriptive mark (as there is a Marlboro County in tobacco country back East).  Philip Morris would have o show that it was the only tobacco producer in that county.  Marlboro country, out west, was invented to re-position the brand.  You can read more about that in “The Handbook of Brand Management” by David Arnold.

10.  MERCEDES – Mercedes is the name of the daughter of an early Daimler Benz enthusiast, and thus was an arbitrary mark.  It would still run into common surname problem.

I don’t know what conclusions to draw from this, other than to note that 5 and possibly 6 of the world’s most valuable brands would probably receive preliminary refusals to register from the US trademark office. So trademark lawyers are needed, after all.

 

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