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EXCLUSIVE RIGHTS: Intellectual Property — Descriptive v. Distinctive: How to Brand Your Business and Products

In this episode of the EXCLUSIVE RIGHTS: Intellectual Property podcast, patent attorney Lily Zhang talks with trademark attorney Karen Won about the age-old choice between adopting descriptive brands or distinctive brands for businesses and products. As Karen tells us, trademark law is more art than science. Why is it that “bagel thins” can eventually become a trademark, but "pretzel crisps” can never be a trademark? Great question! The answer lies in trademark law's five categories into which all brand names can be sorted, each of which comes with different levels of legal protection and enforceability:

  • Fanciful: Very broad, strong rights – completely invented
  • Arbitrary: Broad, strong rights – an existing word that has no relation to the use
  • Suggestive: Usually broad, strong rights – alludes to something about the product you are offering without spelling it out, but the boundary line with a descriptive mark is tricky
  • Descriptive: No initial protection – immediately conveys information about your product, business, or both
  • Generic: No protection ever

Listen to learn more about what these categories mean for you and best practice tips for naming your next product or business.

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Authors

Lily Zhang

Member

Lily Zhang is an IP attorney who handles patent prosecution matters for Mintz clients. Lily has experience in 3G and 4G wireless technologies, RFID, electronic payment systems, data security, NQR/NMR, and social media. Before joining Mintz, she worked as a patent attorney at a business law firm.
Karen is a trademark attorney with a particular focus on representing pharmaceutical clients in branding matters, including drug name approvals at the USPTO and the FDA.