HOW TO SELECT A STRONG TRADEMARK AND WHY IT MATTERS

HOW TO SELECT A STRONG TRADEMARK AND WHY IT MATTERS

By: Julie Tolek

What does it mean to have a “strong” trademark?

A strong trademark is one that is highly distinctive. In other words, a strong trademark clearly identifies the source of its covered goods or services. The more distinctive the mark is, the stronger the mark is and the easier it is to register with the U.S. Patent and Trademark Office (USPTO).

Why do you need a strong trademark?

In addition to being easier to register with the USPTO, a strong trademark offers more protection against third-party use and is less likely to be confused with other marks.

One of the cornerstones of trademark law is whether there is a likelihood of confusion between marks. This likelihood of confusion is examined from a consumer’s point of view. That is to say, would an average consumer be able to recognize the source of the goods or services or would the consumer get them confused with another source?

To prevent such confusion, selecting a strong and distinctive trademark helps consumers to recognize the source of goods or services as your own. Also, a strong trademark makes sense from a business standpoint because a strong, distinctive trademark makes your business stand out from the competition.

Are there different levels of trademark strength?

The case Abercrombie & Fitch Co. v. Hunting World, 537 F.2d 4 (2nd Cir. 1976) established a “spectrum of distinctiveness” categorizing trademarks into five different classes based on different degrees of strength. This “spectrum of distinctiveness” also created levels of protection offered by the USPTO with the strongest marks being awarded the highest amount of protection. The categories are below, from strongest to weakest.[i]

1. Fanciful Marks: A fanciful mark is the strongest kind of trademark because it is inherently distinctive. Fanciful trademarks are made up words which have no meaning. For example, Google (internet services), Xerox (copy machines), and Nikon (electronic equipment) are all made up words and are fanciful trademarks.
2. Arbitrary Marks: An arbitrary mark is composed of a word or words that have their own common dictionary meaning that is unrelated to the goods or services for which it is being used. For example, Apple (for computers) and Amazon (for retail) are arbitrary marks.
3. Suggestive Marks: A suggestive mark usually relates to a quality of the good or service without actually describing it. Punny words can make great suggestive trademarks. Airbus (airplanes) and Netflix (streaming services) are examples of suggestive marks.
4. Descriptive Marks: Descriptive marks are a word or words that merely describe a good or service and are thus too weak to function as a trademark. Words that merely describe an attribute, feature, end result, use of the product, or the persons employed in its production generally are not granted trademark protection. [ii] However, if a descriptive word is used in connection with a product for a significant period of time, it may acquire a secondary meaning as being associated with a single source of origin for that product. Sharp for televisions is an example of a descriptive mark which has acquired secondary meaning and become protectable as a trademark.[iii] Surnames are also typically considered descriptive as well as terms like “best” or “quality”.
5. Generic Words: Generic words are commonly used to describe something and can never become protectable as a trademark in relation to the product or service they signify. For example, “chair” is a generic word for a particular piece of furniture and would not be registrable in relation to chairs.

Where should I start when brainstorming for my trademark?

When thinking about your trademark, a good strategy is to consider making up a word that falls into the fanciful category as that offers the strongest protection against third-party use and is easiest to register with the USPTO. The arbitrary and suggestive categories are the next best options for your mark.

Also important to consider are the future plans you for your product or service and what your business goals are. Such considerations might include a sale or potential licensing options down the road. Remember, your trademark is an asset that adds value to your business as a whole and should be considered as part of your entire business development strategy.

[i] https://casetext.com/case/abercrombie-fitch-co-v-hunting-world-inc

[ii] https://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkStrengthFactSheet.aspx

[iii] https://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkStrengthFactSheet.aspx