One of the most important and most exciting parts of starting a business or launching a new product is coming up with a name and/or developing your marketing. It’s also a dangerous prospect; you might spend a good deal of time and money buying advertising, printing brochures and flyers, and publishing your new brand on your website and around the digital universe. So, you want to be assured all of that investment is not going to waste because the trademark you’re investing in is not going to give your business the protection you need or may even cause problems with another mark, leading to litigation, fines and injunctions.
The “strength” of a trademark lies in its ability to distinguish its goods or services from others who offer the same or related goods and services. Maybe somewhat counterintuitively, the more descriptive a trademark is of the goods and services, the weaker it may be. And a trademark that appears to have nothing to do with your goods and services might be the best choice for getting a registration. Trademarks can be generally divided into two categories (but technically divided into many more categories) regarding the strength of the marks – those that are inherently distinctive (strong) and those that are not (weak). Then, those two categories can be divided further as follows:
Inherently Distinctive Marks –
Fanciful trademarks use words that otherwise do not exist in the normal vernacular, other than being used as the source identifier for goods and services. They’re “made up” words. Some examples are Pepsi, Xerox, Exxon, Nikon, and Nabisco. These words have no other meaning than to identify the products they are used in commerce. These are inherently distinctive of the source of goods and services, and they are considered strong trademarks.
Arbitrary marks are those that use that do not relate to the goods and services being sold. The go-to example here is Apple for computers. We certainly associate the word “Apple” with computers now, but that is the result of the strength of the trademark and success of the company – not because computers and actual apples have anything to do with each other commercially. Other examples of arbitrary marks include Amazon for retail, Shell for gas stations, or Camel for cigarettes. These marks are also inherently distinctive and are strong trademarks.
Suggestive trademarks get into the gray area of the strength spectrum. A suggestive mark is inherently distinctive, and it uses words that call to mind qualities or characteristics of the goods or services that it represents without actually describing the goods or services. In other words, the consumer has to use just a little bit of imagination to realize what the goods and services are. Good examples of suggestive marks are Airbus, Coppertone, Greyhound, Netflix, and KitchenAid. There is often a thin line between these inherently distinctive marks and marks that are “merely descriptive” and not distinctive of its goods and services, as discussed below.
Non-distinctive Marks –
Merely Descriptive trademarks are just what they sound like. These are marks that use words that actually describe the goods or services that are used in commerce. These marks cannot be registered on the Principal Register of the USPTO until they have shown that they have “acquired distinctiveness” or “secondary meaning” in the marketplace. Because these marks use descriptive words and trademark registration (on the Principal Register) gives the owner the exclusive right to use that mark in commerce, letting only one company to monopolize a key descriptive term for that good or service is not fair.
For example, if you were able to register a trademark for deodorant called “Fresh and Dry,” then other people would have to worry about infringement charges by describing their deodorant as “fresh and dry.” Do the same thought experiment with “Quick Service” for fast food or “Fluffy” for cake mix or “Sweet and Salty” for chocolate pretzels. Legislators and jurists have concluded that it is unreasonable to let people monopolize terms that should be available to all competitors for those goods and services.
Some “merely descriptive” trademarks do get registered on the Principal Register eventually, but only after they have satisfied the USPTO’s requirements of proving acquired distinctiveness. One way to establish such proof is to register on the Supplemental Register, which confers some benefits on the trademark owner and offers some notice to would-be infringers. Generally speaking, if your descriptive mark can stay on the Supplemental Register for five consecutive years with no serious challenges, that can be used to show that distinctiveness has been acquired. You can also show secondary meaning through other ways, such as advertising and marketing and consumer surveys.
Generic trademarks are at the weakest end of the trademark strength spectrum. They are not registerable on either of the USPTO’s registers. These are words that simply identify the generic term for the goods and services. An example would be if I wanted to call my Cookie Store “Steve’s Cookie Store.” I have every right to use that as a business name (notwithstanding other considerations, like common law unfair competition laws, other possible senior users in the same local or regional markets, etc…), but I can’t really stop Mary from opening “Mary’s Cookie Store.” Cookie Store cannot be protected in that trademark because it is unfair to prohibit other people who want to open a cookie store from calling their cookie store a cookie store. Now, whether I can protect the “Steve’s” part of it is a different question.
So, that is a breakdown of trademark strength, but it’s just the tip of the iceberg. If you need professional assistance to determine the strength of your idea for a trademark, Sign up for a Free Consultation with Wolfe Legal Services.
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