By the end of this post you’re going to have a good handle on what trademark strength is and what descriptiveness is, and how they kind of play a role and in naming your e-Course. You will also have a couple of real-life examples of what can happen when you choose a descriptive trademark for your eCourse, and you’ll have an action plan in the form of a little exercise to do when naming your e-course programs.
The Spectrum of Trademark Strength, Descriptiveness, and How They Affect Choosing a Trademark for your e-Course
So first, the spectrum of trademark strength. Briefly, the trademark strength spectrum speaks to how protectable a mark is, at least initially. I have another post that speaks through the whole spectrum of trademark strength, but this post will focus on descriptive marks and online courses.
A descriptive mark describes a quality, characteristic, function, or purpose of the service offered under that brand. “Distinctive” is another way of saying “protectable.” Essentially, it’s that legal term that says that a mark is strong, identifiable, etc.
Compare a mark like HOME GOODS to a mark like SPOTIFY. You know what you’re going to find when you walk into a store named HOME GOODS. But when you hear SPOTIFY, at least the first time you hear SPOTIFY, you’re not really sure what that company is about.
But on the HOME GOODS example, for the same reason that you know exactly what you’re going to find when you walk into that store, it’s also hard to stop another store from using that phrase “home goods” in connection with a store that sells home goods.
SPOTIFY, on the other hand, is so unique and so “distinctive” that right away, the owner might be able to stop someone from using a similar mark.
Now, descriptive marks like HOME GOODS, like SPORTS AUTHORITY, like BED BATH AND BEYOND, can earn that distinctiveness factor over time. Because it’s been used for so long it has such a huge following and huge market recognition, etc. HOME GOODS has earned that distinctiveness that’s usually reserved right off the bat for stronger marks like SPOTIFY.
The Supplemental Register
A lot of times if you file to register a descriptive mark with the US Patent and Trademark Office, the Trademark Office will require you to move it over to the Supplemental (or secondary) Register.
The Supplemental Register is fine, and it does have some of the benefits that the Principal Register has:
- You get to use that R-in-a circle symbol; and
- Your registration acts as kind of a roadblock to later filed similar marks,
(to name just a few benefits).
But, the Supplemental Register just doesn’t have the same protections that the Principal Register has. Some of those beefier protections are:
- The registration acting as notice of the owners claim of ownership and the validity of the trademark;
- Filing for incontestability later. (I know I’m using a lot of legal words but “incontestability” is a huge thing in the trademark world. It basically severely limits anyone’s ability to challenge your trademark a few years down the road.)
You can file a new application on the Principal Register for a descriptive mark after it’s been registered on the Supplemental Register but you’re paying to register the mark again.
So when you’re choosing a trademark for your e-course, why not just choose a distinctive strong trademark from the get-go?
Real-World Examples of Choosing a Descriptive Trademark for your E-Course
Okay so I’ve got two real-life examples for you from mega, female digital empresses. And my big disclaimer is:
I don’t represent either of these women, I’m just making observations based on information that’s publicly available from the Trademark Office!
So example number one is Marie Forleo’s B-SCHOOL. B-SCHOOL was registered but it was initially rejected based on descriptiveness. (‘Cause, you know, “B school” is how every college kid refers to “business school.”) The Trademark Office suggested that it be moved over to the Supplemental Register. (Check out the record for yourself, here.)
Another example is Amy Porterfield’s LIST BUILDERS SOCIETY. The LIST BUILDERS SOCIETY trademark was also initially rejected based on the descriptiveness and moved over to the Supplemental Register. (That record is here, if you’re interested.)
An Exercise When Choosing a Trademark for Your E-course
So here’s a little exercise to run through when you’re brainstorming ideas for your eCourse names.
You want to break up the page into three columns.
In that first column, you’re thinking through those marketing phrases, keywords or keyword phrases — things that your audience might search for when looking for a course like yours. These are going to be your descriptors, your descriptive words, right? Those terms might get you into Supplemental Register territory on their own.
In the middle column, think about the transformation you want your customer to go through when completing your course. Focus on the customer and what they will be once they complete your course.
And then, in the last column, you’ve got your brand name. This is your existing, core brand name that all of this will be housed under.
Now use some combination of the three and start working towards a strong trademark. Those first two columns could land you into descriptiveness territory, but now you have an understanding of what a descriptive mark is, right?
At the very least you could have blah blah blah descriptive mark by [your brand name] …whatever your brand name currently is.
So remember, while descriptiveness can be your friend with marketing and in connection with marketing purposes, it might not be your friend for trademark purposes.
I hope this post gave you some things to think through when you are going through the process of choosing a trademark for your e-course.
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