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GE - Billy Blue Communication Design

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Select secondary<br />

word marks<br />

according to these<br />

guidelines:<br />

Assess the advantages you expect to achieve.<br />

New secondary word marks that offer sufficient<br />

advantage to merit adoption also merit a longrange<br />

plan for their establishment.<br />

Begin with a trademark strategy.<br />

Deciding at the outset what is ultimately desired<br />

will make it possible to develop an effective and<br />

consistent strategy.<br />

Normally, both the marketing plan and legal considerations<br />

influence selection of one of these<br />

trademark strategies:<br />

• Coin only the word mark. This, the most common<br />

approach, assumes that existing language<br />

will describe the product generically.<br />

An example is Lexan polycarbonate resin.<br />

• Coin both the word mark and a new generic<br />

name. In this approach, one new term is introduced<br />

as a <strong>GE</strong> secondary word mark, and at<br />

the same time a second term is introduced as<br />

a generic name because the Company has<br />

invented something so new that no existing term<br />

can describe it.<br />

Guard against infringing on the rights of others.<br />

A prerequisite to the adoption or use of a<br />

new word mark by <strong>GE</strong> is that it not infringe<br />

on the trademark rights established by others.<br />

Bear in mind that more than a half million<br />

trademarks are registered in the U.S. Patent<br />

& Trademark Office.<br />

As soon as possible after selecting a proposed<br />

word mark, request from Patent Counsel an<br />

infringement search. This will include careful<br />

investigation to identify any previous use of a<br />

proposed trademark or any uses sufficiently similar<br />

to cause infringement or confusion. Failure<br />

to initiate an adequate search can result in<br />

expensive litigation and embarrassment to the<br />

Company. Also, it can waste the money invested<br />

in an abortive attempt to establish the word mark.<br />

Selecting Secondary Word Marks<br />

Select distinctive names.<br />

<strong>GE</strong> Identity Program 122, Secondary Trademarks & Service Marks <strong>GE</strong> Identity Website: www.ge.com/identity<br />

122.04<br />

Secondary word marks can be classified according<br />

to their content as<br />

• arbitrary names<br />

• suggestive names<br />

• descriptive names<br />

Of these, the most distinctive are those that were<br />

originally arbitrary and meaningless. The classic<br />

example of a highly distinctive mark is Kodak,<br />

but <strong>GE</strong> also has done well with such marks as<br />

Lexan polycarbonate and Lucalox lamps. These<br />

are coined fanciful terms that had no meaning<br />

whatsoever until they were invented and used<br />

with generic names for the products.<br />

From a legal viewpoint, distinctiveness is important.<br />

The more original and unique a name,<br />

the less the chance of infringing on the rights of<br />

others and the better the chance of establishing<br />

the name as a proprietary word mark.<br />

Nevertheless, when using a highly distinctive<br />

word mark, make certain that a suitable generic<br />

name exists to ensure that the mark itself does<br />

not become the generic name for the product.<br />

Highly distinctive word marks, such as “Aspirin”<br />

and “Escalator,” have been lost when the marks<br />

became the accepted generic names for the<br />

products.<br />

From a marketing viewpoint as well, highly distinctive<br />

names offer great advantage over time.<br />

On the other hand, such a choice requires heavy<br />

investment for a long period to build recognition—an<br />

investment that normally would be<br />

reserved for significant new developments.<br />

continued

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