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August 22, 2004

the reason for success -- it's all in the name

Sometimes, it is better to go crude when choosing a trademark.  Take, for example, Butt Paste:

AP article: Retired Louisiana pharmacist George Boudreaux hasn't needed Madison Avenue pitchmen to get the word out about his concoction to treat diaper rash. He just lets the name do it for him: Boudreaux's Butt Paste. "Would you be talking to me if it was called George's Diaper Cream?" Boudreaux recently asked a reporter.

Probably not. And a paste with any other name probably wouldn't have gotten attention from Oprah Winfrey, who featured Butt Paste on her show; ESPN, which, in a tounge-in-cheek feature, suggested it was partially responsible for Louisiana State University's jock-itch-less championship football season; and from Jay Leno, who displayed a newspaper ad for Butt Paste on the "Tonight Show" - and said that he didn't want to know what it was used for.

It certainly wouldn't have created waves in auto racing circles, as Butt Paste has managed to do with its logo - a grinning baby covered by a blanket - adorning the car of NASCAR driver Kim Crosby with the product's full name across the rear bumper.

A good trademark really doesn't get much better than this -- catchy, memorable and the phrase is a little bit scandalous/fun/naughty. 

For federal trademark registration purposes, however, the phrase may have problems.  Why?  Trademarks are classified as being generic, descriptive, suggestive or arbitrary/fanciful when applied to their associated goods.  Generic terms receive no trademark protection -- i.e. the mark "Shirt" for a man's shirt.  Descriptive marks describe the goods and services -- i.e. the mark "Blue Shirt" for a man's blue shirt.  Descriptive marks may acquire secondary meaning (i.e. consumers recognize it as a trademark and not a descriptive term), however, and thereafter become suitable for federal registration.  The Butt Paste mark could be argued to be descriptive of the goods (it really is butt paste afterall) but the phrase has probably acquired secondary meaning due to its infamy.  Alternatively, the mark may be suggestive of the goods (not descriptive) and therefore be entitled to registration without a showing of secondary meaning. 

The final classification of trademarks -- arbitrary/fanciful -- receive almost automatic registration but they are the least favored by clients because it takes a substantial amount of advertising and branding investment to familiarize the market with the trademark.  Take, for example, the mark Xerox. It has no pre-defined meaning and consumers who are unfamiliar with the mark would have no grasp as to the type of goods the mark referred.  

While I usually counsel clients to choose marks that are at least suggestive, the Butt Paste mark just may hit the proverbial spot when it comes to marketing and name recognition.  If Oprah features it -- all must be right in the world. 

Posted by Douglas Sorocco at 07:21 PM.
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