Brand Protection in an AI-Driven World, Part 1: IdeatingYour Mark

by: Rosanne Yang

In 2021, InfoLawGroup ran a multi-part series on brand protection, a vital part of a company’s operations no matter whether they have a portfolio of 1 or 1000+ marks. While the fundamentals have not changed, in the intervening years, AI has become an increasingly common tool in every step of brand protection - from ideation through registration and ultimately enforcement - and its impacts should be explored in the context of those fundamentals. We therefore are pleased to bring you an updated and expanded take on the fundamentals, new topics, and tips on the use of AI to facilitate your brand protection efforts.

Part 1: Ideating Your Mark

Coming up with a trademark or service mark for your product or service is one of the most important things you can do in your business. A mark is the term, logo, or slogan by which you will promote your products/services, by which people will ask for them, and by which people refer to them when speaking with their family and friends. It’s how consumers will distinguish your product from all the others.  In fact, that source-identifying function, which protects consumers from becoming confused about whose products/services are whose, is the fundamental purpose of a trademark. 

There is a lot of marketing genius that goes into ideating a mark, and a fair amount of legal work once you have some ideas. Increasingly, AI is playing a role in all those processes. Today we explore key legal factors affecting initial ideation of your mark, and how to effectively use AI tools (or not) in this process.

1.     Strength of Mark

How descriptive a mark is versus how creative/unique a mark is determines how strong the mark will ultimately be. Strength of the mark influences how firmly consumers identify you as the source of the product versus all the other competitive products, and impacts clearance and registrability determinations. It also influences whether you are able to stop a competitor from using a similar term. Strength of a mark is measured on a continuum from descriptive (weak) to arbitrary/fanciful (strong). Indeed, truly descriptive marks do not function as marks until they acquire distinctiveness (aka “secondary meaning”) which takes time and investment, and generic terms (e.g., “apple” as applied to apples) never can function as marks.

Pro Tips:

• Decide from the get-go whether it is more important to be communicative about the product features, even if your competitors use similar terminology, or to have a more unique mark that you can defend and enforce against competitor encroachment.

• AI tools do not necessarily do a good job of identifying weaker marks or ideating strong marks.  A lot of that will depend on your prompts, but don’t assume that it understands what a “descriptive,” “fanciful” or “arbitrary” mark really is. For instance, one common AI tool told me (repeatedly and emphatically!) that CHILDREN’S LAUGHTER for a hypothetical line of toys was descriptive and would require secondary meaning in order to register but that adding a “distinctive” element like “& Co.” or “Toys” would help with registrability. The first part is debatable, and wow…that second part is just plain wrong – those elements are about as generic as they come.

2.     Meaning

Check for alternate meanings of your mark -- translations, transliterations, and contextually -- that may not land well with your consumers. 

There are some truly legendary stories around marks that sound great in the brand’s primary market language but don’t play well when foreign language speakers encounter the mark, such as “gerber” which means “to vomit” in French, and “nova” which (when heard as “no va”) means “it won’t work” in Spanish, neither of which leaves a great first impression if you’re trying to sell baby food or cars (respectively). Where your mark will be localized through the adoption of a local character set, it’s also important to make sure that both the meaning of the chosen characters and how they sound are acceptable. Even if you don’t intend to sell in other countries, consider consumers who are immigrants and students of foreign languages, who may nonetheless encounter your mark.

In addition to translation and transliteration, consider whether the presentation of the mark is subject to different interpretations depending on the context, including due to presentation in contexts where the intended punctuation and spacing may not always be evident. For instance, when our CHILDREN’S LAUGHTER mark appears in a domain name, it’s not necessarily clear whether the “S” goes at the end of the first word or beginning of the second, so CHILDRENSLAUGHTER.com could take on an entirely unwanted meaning. 

Pro Tip: 

• Translation and transliteration are where AI tools can do a reasonably good job of identifying key information and risks. But it’s still not perfect - none of the tools I tried pointed out the potential issue with the domain name presentation.

3.     Online Availability

Rare is the business with no online presence, so considering whether your customers can find you online is important as you select your name. For instance:

• Is a matching domain name available?  

• Will you have an app? If so, are there apps with the same or similar names already being offered in the various stores?

• Will you leverage a site like Etsy or Shopify to sell your products or services? If so, is your name available on those platforms?  

• How will you connect with your customers - and they with you - online? Are corresponding names available on the social media platforms most likely to be used? What about in reviews sites? 

It is rare to find a mark that is available across all these online arenas. So, have a clear understanding of what the back up options are and whether they are acceptable. For instance, if the .com isn’t available, might it be available in one of the newer top-level domains such as .shop? Is there an easy variation online that consumers will still associate with your brand? Can you acquire the online account or domain from its current user for a reasonable price?

It is usually best to ideate several distinct choices, because once you have one or more ideas lined up for your mark, the next step is to make sure that any mark or marks you adopt will not violate someone else’s rights and that they are available for registration should you wish to do that. If a mark does not survive this clearance process, you will find that having other options in the hopper is a great time saver. We will focus on clearance in our next installment.

Originally published by InfoLawGroup LLP. If you would like to receive regular emails from us, in which we share updates and our take on current legal news, please subscribe to InfoLawGroup’s Insights HERE.