William Tennant

Trademarks have varying strengths depending upon their distinctiveness. While Apple as the name of a computer company has a high degree of distinctiveness, Fred’s Fish Fry as the name of a seafood restaurant? Not so much. The Apple name is arbitrary when it comes to computer products while Fred’s Fish Fry is a descriptive name. So naming and branding products requires creativity. Choose a name that creates the connection to your brand of goods or services rather than one that describes them. Although descriptive names can be trademarked, they are inherently weaker than distinctive names. This brings us to “Philadelphia’s Cheesesteak,” a mark for which the Trademark Office in my opinion rightfully denied registration. The Applicant initially filed for registration in June 2009 and received final denial notice this August. As background, the term Philadelphia Cheesesteak used to describe the thinly sliced steak with melted cheese on a hoagie roll is generic and not subject to protection. However, there have been federal registrations for “Philadelphia Cheesesteak Co.”and “The Original Philadelphia Cheesesteak Co.” The Trademark Office denied registration of “Philadelphia’s Cheesesteak” on grounds the mark was primarily geographically descriptive and on grounds of a likelihood of confusion with the aforementioned trademarks. The matter is now under appeal to the Trademark Trial and Appeal Board. Distinctiveness is imperative when it comes to building a brand. Be wary of using descriptive terms, not only for trademark registration, but for your clients and customers who will rely on such as a source identifier of your goods and services.