How to Counsel Clients Who Propose Generic and Descriptive Marks: A Video Q&A with IP Attorney Candice Cook
Alt Legal Team | April 18, 2021
For many businesses, coming up with company and product names can be challenging and expensive. In a client’s mind, it’s often easier and more cost-effective to propose a mark that’s generic or descriptive. Meanwhile, lawyers are in the business of serving their clients and it can be hard to tell them “no” and potentially refuse business, knowing that the mark will likely not survive the examination process. Candice Cook joined us to discuss what to do when a client comes to you with a generic or descriptive mark that they want to register. Watch the video interview and review our breakdown below.
Can you give us some background on name generation and the timeline for generating a new business or product name?
When it comes to background and the timeline, we have two issues that we’re looking at – the legal scenario and the timeline for marketing. What the timeline looks like in terms of creating a name depends on the client, how sophisticated they are, and whether they are a large or small business owner.
From a legal perspective, for getting things through to registration with the USPTO, we’re looking at 12-18 months in a perfect world. Of course, we don’t live in a perfect world, issues will arise, and this 12-18-month estimate will often get stretched out, so you must manage and set those expectations. For clients to not have that information on the front end is incredibly detrimental because that affects how they forecast, not just in terms of their financial projections, but also for production and marketing.
Then we have the timeline for marketing. For a small business, the founder or owner is the marketing team and if you’re looking at larger institutional clients, they have a marketing team. The way legal would like to see things done may not necessarily work with how a marketing team wants things done, so it’s important to help everyone understand what that timeframe looks like.
If you’re looking at smaller companies, by the time they get to you, they may already have a name that they love. It’s your job to step in and help them understand, “Hold that thought. Don’t fall in love with the name so fast.” You can proceed to do a search and provide them with a strong response. If you’re lucky enough that a company comes to you while in the process of developing a name, knowing that they need to trademark the name, the client will dictate how long the process takes. They may be working with an outside branding company or you might be sitting with them, guiding them, both from a marketing and legal perspective, to help them understand what is and is not going to work.
The last thing that is important to bring up is whether this is a brand-new product or whether they are continuing a product. The timeline is predicated on what came before it. Sometimes this can be a one-day conversation, or it can be a six-month conversation. If it is a brand-new product form a well-known institution, consumers have certain expectations. Lawyers should be asking: Are you fundamentally changing this product? Should you have a new mark? Or is this really the product 2.0? The last question is something we see in the video game space. A brand-new game versus a tweak on an OS will have a new name. On the flipside, when it comes to cars, even if you’re just reconfiguring a few things, it’s still “Brand of Car” but the new series. Having those conversations with the client is important so that they understand whether the new name will benefit them in the marketplace and what the rollout will be.
Cost and ease are of course some of the main reasons why business owners are coming up with generic or descriptive marks. Why else are business owners drawn to these types of marks?
Business owners are coming up with these marks because they are easy and most of it comes from a place of thinking that they are being novel. They think “Everyone will know what this is! It’s so witty! No one’s ever thought of it before!” But they don’t have an appreciation of what trademarking is intended to do. They aren’t understanding what genericness and descriptiveness means in the marketplace. Nor do they understand that even if they were able to get the mark, that they could fall victim to genericide. People often know enough that they know they need their marks to be protected, but what they don’t know is why descriptive or generic names aren’t the best way to do it.
The other reason why some business owners tend to be drawn to generic or descriptive marks is because they’ve seen others with brands that achieved trademark registration and they aren’t appreciating the nuances that allowed those marks to obtain protection.
I find that these are really well-meaning clients who think that their ideas are novel, but who don’t live in the trademark landscape. But if we have lawyers who won’t say “no” we tend to perpetuate this bad system of filing marks that are generic or descriptive. In my opinion, it is bad practice to encourage and provide individuals this runway to go after bad marks. Quite frankly, this does a disservice to the unique products that they are creating and can create an issue with the landscape as a whole because we do want brand identifiers. Our system works best when we reward individuals who have novel, distinct brands. We shouldn’t be taking names out of the marketplace that don’t need to be removed. This is a disservice to our practice and clients, particularly because what we tend to find is that after we go through the exercise of finding names that are not descriptive or generic, those names are better. There’s more thought put into them.
It is hard to say “no” to a client when they come to you with a generic or descriptive mark. It is akin to telling them “You don’t have a beautiful baby!” There may be some lawyers who attempt to register these types of marks, but it behooves you to decline this type of representation. The caveat to all of that is that the trademark law landscape is constantly changing. For example, last year we went from “dropping a .com on a name is not protectible,“ to now, the Supreme Court telling us with Booking.com that maybe it can be. Read more about the post-Booking.com landscape. For individuals who are used to thinking outside the box, they don’t want to do things the way they’ve always been done, they are interested in seeing what they can do.
Also, consumers are very savvy. This idea that they want their IP protected is a very mainstream idea. TikTok teenagers understand that there is value to their brand and they want to market and monetize it. They’re sophisticated enough to be dangerous. We have to just take them over the bump and get them out of this generic and descriptive landscape.
When a client comes to you proposing a generic or descriptive mark for registration, how do you advise them? How do you navigate this process and have honest conversations about the likelihood of registration and the ultimate strength of the mark?
I am of the firm belief that our greatest currency as counselors is candor, transparency, and integrity in our work. I truly believe that this conversation must be had as soon as you hear the name. They can be tough conversations, particularly for individuals or institutions who knew they needed to handle the IP component of their business, but it was definitely not the first thing that they wanted to do. If you have the good fortune of being there at the inception of both the idea and the business, you can say all of that early on. Unfortunately, that’s not always the case and by the time a client comes, they’ve got stationery, t-shirts, and they’ve never done a clearance check. The conversation on the front end has to be a candid explanation that the mark is generic or des
criptive. I navigate the process by having an honest conversation discussing the rules and exploring examples the client may have seen that abut those rules. Many attorneys have used the example of how Apple can have a trademark for computers, but they aren’t trying to become the next Honeycrisp!
I’ve found that some of the best examples of why it’s so important to pick a distinctive name is having people listen to commercials and look at the marks that are actually registered. The ones that are most compelling are ones by pharmaceutical companies. They are experts at coming up with unique names and lending themselves to the reality that the product name is a brand identifier. You shouldn’t automatically know that the product is just by hearing the name. The question should be “What is it?” When people learn what the product is and understand to ask for the brand name, that’s what makes it a brand identifier.
It can be difficult to counsel a client away from a generic or descriptive mark. As a client, entrepreneur, or business owner, you become emotionally invested the more you feel like this is the only name you have. I explain that time is the most valuable commodity that you have and every moment that you are not investing in a registratble name, that takes away from building a brand that can actually have stickiness. The problem with a generic or descriptive mark is even if it were to be registered, your competitors may be able to cancel the mark.
Relatedly, there’s been a lot of discussion about what happened with LeBron James’ application for TACO TUESDAY. Read more about the TACO TUESDAY filing. His attorneys knew that the mark was likely to be rejected, but one of the strategies behind filing this mark was for the USPTO to reject the mark and confirm that it is generic or descriptive and that nobody can own it. His attorneys understood that by getting this confirmation from the USPTO, this would preclude others who were already using the TACO TUESDAY mark from sending cease and desist letters to James. Whether this was the proper strategy to achieve this end is another discussion, but the reality is that cancellation is a very real possibility. Having an honest conversation about the likelihood of registration isn’t going to get you home free. There are checks and balances to the system.
The last consideration is if it is such a great product or business, why are you not able to come up with something that is not generic or descriptive? Don’t you want your standout business plan to have a name that is equally compelling? In most instances all it takes is some work. It’s not laziness, but there’s a level of comfort. Sometimes in business you’re supposed to be uncomfortable to get it done right, navigating it with facts and truth instead of fiction and fantasy. When lawyers start saying “Well, maybe you can register it,” things start getting dangerous. We need to think outside the box and be ahead of the curve. You can guide clients through this process and the more they’ll understand that it’s in their best interest to have a mark that is not generic or descriptive. They’ll also feel resolve if down the road they are facing infringers and they have some heft and weight to the mark. They’ll have the ability to defend themselves, knowing that they put in the work to create a true brand identifier.
When it comes to mark selection, how do you advise clients based on their varying risk and cost tolerance?
Short answer – honest transparency. That means the client needs to be transparent about what their budget is, and we, as their lawyers, need to be transparent about what the cost of their choices is going to be. We need to make sure that everyone who is a stakeholder is part of the conversation. This is one of those times where it’s really important for everyone to be on the call so that everyone understands what others are thinking in terms of scope and scale of budget and time expended. One person may still be willing to exercise a “long shot is still a shot” mentality, but another partner in the venture may not want to go that route and spend money that way. So having that conversation early on (both in writing and on the phone) with all stakeholders and making everyone identify priorities and budget is the best way to both assess what the risk and cost tolerance is going to be and making everyone comfortable with where that choice falls on the deliverable scale, meaning if this is how much you want to spend, you do not want to utilize this name.
When conducting a search for a generic or descriptive mark, how can you navigate the process in a realistic way?
The best way to navigate is to do so honestly. Clients will Google everything and will come to you and say, “I Googled the mark. It’s available and I think I can have it.” It’s important to say that Google is not sufficient for conducting a search. Google is a nice search engine, but it is not extensive or comprehensive enough to justify filing a trademark application. It’s necessary to conduct a full federal and state search. For enterprises that want to get outside of the US, which we have increasingly seen over the years, if they’ve identified what market they want to have a hold on, it’s important to do a search there as well. While this can seem to be a matter-of-fact response, and it certainly makes sense for practitioners, this is not always obvious for business parties and it’s something they don’t want to hear. Nor is it the message they want to convey to executives at the company who asked them to get the trademarks registered, but didn’t appreciate the nuances involved in executing this task.
It’s best to have all stakeholders involved on a call because it’s hard to hear that you can’t register a mark because it’s generic or descriptive. They will say “We did a search and all these other people are using the mark” but they’re using the mark in connection with products that are not in alignment with the name itself, we are seeking to do it directly in connection with the name itself. It’s important to explain that this is not an attack on the name you’ve selected. These are facts that hold true no matter who you are. It’s important to have an honest conversation about legal facts and reasoning.
Candice Cook, Founder and Managing Member, The Cook Law Group, PLLC
Credited for changing the way businesses and entrepreneurs imagined the utilization of Intellectual Property as a groundbreaking attorney and trademark strategist, Candice Cook Simmons is a Founder, Business Strategist, Speaker, and New York law firm partner advising top executives, creatives, and organizations in making cutting edge business decisions.
With a professional range that includes high-profile matters, crisis management, global market verticals including consumer products, food and beverage, entertainment, retail, travel and leisure, technology, and fintech industries, she has solidified her reputation as a top leader at the intersection of business, legal, and strategy. The Founder and Managing Member of The Cook Law Group, she has been featured in numerous pub
lications as one of New York City’s top attorneys and was selected as a “Rising Star” and “Super Lawyer” in addition to other “Top” and “Best of” lists by media outlets – including the New York Times – in recognition of her significant contributions to business and legal strategy and global business expansion.
Candice was recently selected to be a TEDx speaker and served as a judge in the Booz Allen Foundation $1MM Covid-19 Innovation fund challenge. Candice was also selected as a Venture Partner for Republic– a private investing platform for investors seeking high growth potential in the startup, gaming, real estate, and crypto verticals.
She serves on the Board of Directors for ISAIC (Industrial Sewing and Innovation Center), Greyston Bakery (the oldest B Corporation in New York) and as an Advisor to Culture Shift Labs and TheHistoryMakers in Chicago— the single largest archival collection of African American oral history which was recently acquired by the Library of Congress.