This guide was contributed by Suzan Hixon, esq. Find her at HixonLaw.com.
Branding your subscription box will be one of the most exciting, and most frustrating, aspects of the entire development process of your business. Choosing your colors, your overall “look and feel,” the tone of your copy – all of these elements work together as part of your overall brand.
All too often, however, entrepreneurs forget the importance of the name of their subscription box. The name of the subscription box, and any company, is considered a trademark, and lends itself to developing your overall brand value.
Choosing a ‘totally rad’ (that’s the legal term) trademark for your subscription box in the earliest stages of development is ideal, because that is the optimal time to select a trademark that is both marketable, from a brand value perspective, and protectable, from a legal perspective.
Unfortunately, these two goals can often collide.
To help with this, I’ve outlined some tips below, which are aimed at helping you create a trademark for your subscription box that is viable from both a marketing and legal standpoint.
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Tip #1: Avoid “descriptive” trademarks
US trademark law recognizes a sliding scale of protectability, where the more distinctive and unique the term, the easier it is for the owner to claim and be granted exclusive trademark rights for that term
Trademarks fall somewhere on this sliding scale, ranging from “coined” (the strongest trademarks from a legal perspective) to “generic”:
- Coined – very strong (KODAK®, BULU BOX®, PROSPURLY (TM))
- Arbitrary – strong (BLACKBERRY®, JULEP MAVENTM)
- Suggestive – “sweet spot” (PUP-PERONI®, BARKBOX®)
- Descriptive – risky (HONEYBAKED HAM®, GENTLEMAN’S BOX (TM))
- Generic – bad
The best way to understand this sliding scale is to practice with a made-up example.
Let’s say you want to start a subscription box business where subscribers get a monthly box of a couple unique and hilarious “trucker hats.” (You know, the ones that have the mesh backing, a little “button” on top, a plastic strap, and a flat bendable bill?)
Your initial inclination may be to call this box “The Trucker Hat Box.” From a marketing perspective, this could be a good trademark, because, as the owner, you don’t have to go above and beyond in terms of educating possible subscribers as to what your box is all about.
However, from a legal perspective, it’s going to be nearly impossible to get a registration.
The United States Patent and Trademark Office (“USPTO”), which grants trademark registrations, typically refrains from granting a registration for trademarks which are “descriptive” of the underlying product. The policy here is that the USPTO isn’t going to assist in enforcing a trademark that anyone should be able to use to describe their product (though there are exceptions to this general rule).
But let’s try to get more creative.
How about a trademark that alludes to the goods, but doesn’t necessarily describe them? “Suggestive” trademarks are really your sweet spot when it comes to choosing a trademark for your subscription box business. The USPTO will typically grant registrations for suggestive trademarks, and they are also great from a marketing perspective.
Continuing with my trucker hat subscription box example, you could take take some trucker lingo, such as “10-4,” which means “acknowledged”: THE BIG 10-4 BOX.
In terms of educating your potential customers, keep in mind you could show the trademark as follows:
- THE BIG 10-4 BOX®
- The Subscription Box for Trucker Hat Lovers
(Please note that the ® notice symbol is only reserved for federally registered trademarks!)
Move up the scale, you can look at “Arbitrary” trademarks, which are real words that have no connection to the underlying product. These types of trademarks are protectable from a legal standpoint, but expect to spend more time and money in educating your consumers about the nature of the underlying product. A couple real world examples of arbitrary trademarks are APPLE® Computers and BLACKBERRY® Smartphones. An example of an arbitrary trademark here, and in staying aligned with the fruit-themed trademarks of this example, could be PEACHES Subscription Box.
However, as you can see, arbitrary trademarks are probably not ideal for subscription boxes.
Finally, “coined” or “fanciful” trademarks are invented or “made up” words that would otherwise have no meaning. These are typically very strong marks from a legal protectability standpoint, but, as with arbitrary trademarks, you’ll need to work hard to proactively educate consumers about your subscription box, and this costs marketing dollars. Two real world examples are EXXON® Oil and KODAK® Cameras. Continuing along with our trucker hat subscription box example, let’s say I just generated some made-up word, like…SQUILLIQUIX! I know it seems crazy, but there are plenty of companies out there with totally crazy made-up “words” for their products.
Here’s the lesson: Initially, when you are selecting a trademark, you may be tempted to choose a descriptive trademark because there are marketing benefits to using a trademark that describes the product. Keep in mind that the most valuable marks reside on the upper end of the scale (i.e., “coined” and “arbitrary” marks). However, suggestive trademarks often strike the perfect balance, protectable as trademarks from a legal perspective, while also suggesting characteristics of the subscription box.
Tip #2: Avoid “famous” trademarks
Normally, trademarks are protected in the area of commerce in which they have been used. For example, it is possible for there to exist numerous registrations for the trademark DELTA (i.e., DELTA® Airlines and DELTA® Faucets).
Some trademarks are so inherently famous, however, that any use of the trademark or anything like it is a problem, even if the famous owner has not and never will enter the trucker hat subscription box field. If I started a trucker hat subscription box business called BIG MAC’S Trucker Hat Subscription Box, you better believe I would get a cease and desist letter so fast from McDonald’s it would make my head spin.
Tip #3: Avoid “clever” misspellings of otherwise unusable marks
Many clients ask if they can use fun spellings and iterations of marks that would otherwise not be available, for example, marks that are inherently famous. Don’t even ask if you can use DISNEE instead of the famous mark DISNEY®, no matter what is in your subscription box.
Also, a descriptive trademark like “Super Cool Trucker Hat Box” is likely not registrable, even if you write it as “Sooper Kewl Trucker Hat Box.” The mark would still be considered descriptive, and receiving a trademark registration from the USPTO would be challenging.
Tip #4: Conduct a trademark search
After you’ve chosen one or more trademarks that seem possible, and before settling on a trademark and commencing any marketing efforts or spending any marketing or legal dollars, trademark clearance searches are strongly recommended. Such searches will help you determine if a trademark similar to your trademark already exists.
Understand that you want to choose a trademark that isn’t “confusingly similar” to other trademarks. Choosing trademarks that are confusingly similar to other prior existing trademarks hurts the prior brand owner, as well as the general public.
You can perform your own “cursory trademark search” by searching Google and the USPTO website (www.USPTO.gov). You may also want to search a couple more platforms (e.g., www.knowem.com and www.namechk.com) for purposes of domain name and social media handle availability before settling on a trademark.
Keep in mind that searching on your own has its inherent limitations. Therefore, should the cursory search be “clear,” consider utilizing a third party search firm to search for trademarks that could be listed in business databases and used at common law. Such a comprehensive search will also check state trademark databases, and will have searching capabilities beyond what we can do on our own, such as searching spelling variations across different platforms.
I hope these tips provide some inspiration for you as you work on your subscription box branding. And, if anyone reads this and is inspired to start her own trucker hat subscription box business, please contact me – I will be your first subscriber!