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How To Identify Weak vs. Strong Trademarks

Issues With Generic And Descriptive Trademarks In this article, you can discover:

  • Why generic trademarks receive close to no protection under trademark law.
  • How descriptive and suggestive trademarks on their own, are difficult to trademark.
  • The reasons why it’s in your best interest to trademark an arbitrary or fanciful/coined mark – rather than rely on the common practice of SEO.

Do Generic Trademarks Receive Protection Under Trademark Law?

Generic trademarks receive no protection at all under trademark law.

For example, if you have a cookie store and you call your cookie store ‘The Cookie Store,’ you cannot register that for retail services for selling cookies. You can’t stop other people from using generic descriptions of the goods and services that you use. You have no protection at all.

However, if your generic trademark has something else to it, you might have a little more leverage

For example, let’s say you own ‘Fossil Watch Company.’ To register a mark for this name, you’ll have to disclaim the generic parts, in this case, ‘Watch’ or ‘Company’. Suppose there is another company called ‘Fossil,’ which is in a different line of business. In this case, you might not have any interference with them, consumers will not be confused, because of the words ‘Watch Company’ name at the end of it.

Thus, there may be some marginal areas where a generic or descriptive word that would be weak on its own might afford you a little bit more rights, but not without something else such as ‘Watch Company.’ A company simply named ‘Fossil’ would receive zero rights as a part of another trademark.

Are Descriptive Marks Difficult To Trademark?

Descriptive marks are difficult to trademark because they’re weak and because the law doesn’t want to stop people from using common descriptive terms to advertise and identify their goods.

You have to show a level of fame, recognizability, and commercial impression sufficient to show that you should be able to keep a descriptive mark. Otherwise, it’s similar to generic marks. This is because by using a descriptive mark, you’re blocking off other businesses from communicating the qualities of their goods and services to the consuming public.

What Is A Suggestive Mark? Will It Provide Strong Trademark Protection?

A suggestive mark is one where the word or the image conjures up the image or similar image of what the product or service is. For example, Coppertone for sunscreen is a suggestive mark because it’s suggesting that using the product will give your skin a copper tone. Greyhound for travel services is a suggestive mark because it conjures up the idea of the speed and efficiency of a race dog.

A suggestive mark is strong enough to get registration, pending all the other factors being satisfied and avoidable. It’s not as strong as an arbitrary or fanciful/coined mark, but a suggestive mark is sufficiently distinctive to get registration, which is the goal.

If you can get on the principal register (a register for distinctive trademarks), then you’ve reached the highest high point. Aside from specific circumstances, some companies have very strong marks because of the distinctiveness of their mark, the specialty of their goods, and their fame. But if you’re registered on the principal register, you’re doing as well as any reasonable person can do.

Do Arbitrary, Fanciful, & Coined Marks Offer The Strongest Trademark Protections?

Arbitrary and fanciful or coined marks offer the strongest trademark protections. An arbitrary trademark is a mark that’s completely unrelated to the product, but it’s not a made-up word. A fanciful or coined mark is a made-up word.

Examples of arbitrary marks are Apple, and examples of fanciful or coined marks are Nabisco and Pepsi.

Why Is Understanding Different Trademark Types Important When Selecting The Name Of A New Product Or Service?

A lot of intelligent business people are trying to take advantage of search engine optimization (SEO). They have an SEO mentality, which is for products and services to be listed prominently, incorporating SEOs improves that prominence. This is correct, as it is a great way to drive attention toward your enterprise.

However, the SEO mentality clashes with having a strong trademark because everybody else on the planet who sells goods and services is also trying to take advantage of SEO practices.

Contrary to SEO fundamentals, you best set your product apart by having a strong, distinct trademark. Then, you simultaneously build your brand with quality services and goods, a good reputation, and goodwill. This is where your trademark will become more valuable and your basic, $11.99 GoDaddy website will become worth more than someone else’s generic website for the same thing.

Even if the weaker trademark immediately gets a few more search results, you’re not going to be able to protect that weaker mark from infringement. If you’re selling a good product or a low-quality version of somebody else’s more distinctive trademark, you’re just setting yourself up for people to infringe on your success.

Thus, if you understand the difference between an SEO mentality and creating a strong trademark, then you can avoid a lot of problems by not picking a name that you’re not going to be able to protect.

How Can Wolfe Legal Services Assist In This Step Of The Trademark Process?

My experience in trademark law is enhanced by my extensive experience practicing business in the hospitality, entertainment, insurance, and education fields. I not only know trademark law, I know business.

Thus, when you get a trademark opinion, I can tell you why the mark is a good or bad name. While I’m happy to brainstorm some ideas, I can’t make any suggestions that I can guarantee are not already trademarked. A new name means a new trademark search.

In any case, I’m always happy to have a conversation about different options and let you know if you’re going to run into problems.

For more information on Issues With Generic & Descriptive Trademarks, a free initial consultation is your next best step. Get the information and legal answers you are seeking by calling (615) 784-9372 today.

Steven Wolfe , Esq.

Call For A Free Consultation (615) 784-9372

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