Descriptive trademarks are compelling trademarks to choose, but there are some goods reasons to avoid them if possible.
David Koller wrote an interesting article titled “The 7 Deadly Sins of Naming Your Startup.” What makes this article interesting in part is that David identifies what not to do when most articles talk about what you should do. The number three issue on his list is protectability. Although a mark can be unprotectable for a number of reasons, for trademark searchers protectability means avoiding a likelihood of confusion with a prior mark.
But the number 3 issue is not what caught our eye. What caught our eye was the number 2 issue, which is extendability. David says that pigeonholing yourself into a specific industry, niche, product, or feature will make it harder and more expensive to pivot like many startups end up doing. It can also restrict your ability to grow. What David is referring to in a legal context is choosing descriptive trademarks.
In prior posts, we have talked about how descriptive words can complicate the trademark search process because they increase the number of results that must be reviewed. We have also talked about descriptive trademarks are not immediately protectable, take time to acquire trademark rights, and receive the lowest amount of conceptual strength possible at law. Finally, we have talked about being unable to expand because of possible confusion issues.
Depending on the mark you choose, you may not need to worry about any potential confusion issues because your mark practically will not allow you to expand because it was too narrow to begin with. Descriptiveness is an issue many startups deal with because there is no guess-work with a descriptive mark. The name tells consumers exactly what you are selling. Starting with a name that requires some imagination also requires some effort to educate consumers about what you are selling.
It was an issue we faced when naming our trademark search engine. The advisors we worked with recommended that we adopt QuickSearch or something similar. We decided to go another way. We wanted a name that users could come to rely on as a partner or teammate. So we decided that a human name was appropriate for that purpose. BOB is not a name that immediately describes a trademark search engine, but is a name users can form a relationship with.