From a legal point of view, the best trademarks are strong identifiers of source. A trademark’s strength is determined by its level of distinctiveness, or its ability to identify the trademark owner as the source of its products or services. A strong trademark is easier to protect from unauthorized use by others. On the other hand, a weak trademark tends to lack distinctiveness and is usually a word, phrase, or design that is already being used in some form by others. As such, a weak trademark is difficult or sometimes impossible to own and protect.
When considering a trademark for your company's products or services, choosing a strong trademark will create a right that you can protect, making doing business in the marketplace much easier and more effective.
Strong Trademarks
What is a strong trademark? In order of relative strength (strongest to least strong), strong trademarks fall into three main categories:
• Fanciful or coined marks
• Arbitrary marks
• Suggestive marks
A fanciful or coined mark is one which has been dreamed up by the owner and which has no meaning in any language. And because it has no common meaning, it has no function except to identify the trademark owner’s products or services. The public only comes to understand what the trademark means through the owner's marketing of its products or services under that mark. These trademarks are the most easy to protect and trademark lawyers love them. Examples: Kodak® for film and Verizon® for telecommunication services.
Unlike a fanciful or coined mark, an arbitrary mark is a word or set of words that have a common meaning in some language. However, the trademark owner uses that word or set of words in connection with products or services that have nothing to do with that meaning. Because the words and their application are unrelated, the trademark owner's advertising shows the public that this mark applies to these particular goods and/or services. Examples: Apple® for computers and Oxygen® for a television network.
A suggestive mark suggests the nature of a product or service without merely describing that good or service. Suggestive marks require some thought or imagination on the part of the consumer as to the connection between the mark and the goods or services. On the scale of strong marks, while registrable, suggestive marks are generally entitled to less-comprehensive protection. Examples: Coppertone® for suntan lotion and Sweetarts® for candy.
Weak trademarks
Unlike strong marks, weak marks are difficult if not impossible to protect. They cannot be registered on the U.S. Patent & Trademark Office's principal register or protected from unauthorized use by others. Descriptive marks and generic words fall into this category.
A descriptive mark is a word or set of words that merely describes an aspect, quality, or attribute of the goods or services to which it applies. These marks cannot be registered on the U.S. principal trademark register. Similarly, laudatory or praising terms such as “best” or "quality" are generally not protectable as trademarks. Because they are weak from a legal point of view, descriptive marks are very tough to enforce against unauthorized users of similar marks.
However, it is important to note that a descriptive mark may eventually become distinctive if it acquires what is called "secondary meaning." This means that the mark may be used in such a way that, over a period of years (at least five), it becomes known to consumers as a trademark and not merely a word or collection of words that describes the goods or services. In this way, such a mark becomes an identifier of the origin (e.g. maker) of those goods or services, where consumers come to recognize this trademark as a brand. Examples: Holiday Inn® for hotel services and All-Bran® for cereal.
Unlike the marks above, a generic word can never become distinctive and is incapable of being owned or protected by any single user. Generic terms are the ones you find for items in the dictionary. Because it is the common name of a product or a service, a generic word or phrase is inherently descriptive. Such word(s) must be in the public domain for others to use in promoting their goods and services and can never serve as trademarks. Examples: “watch” for a timepiece or “ring” for a piece of jewelry worn on the finger.
Choosing your trademark
The bottom line is that, if you are looking for a trademark for your business, choose a strong one - ideally a fanciful or made-up term or phrase. If you have already chosen your trademark and it is descriptive, consider another mark. If you cannot let it go, understand that you may have a harder road to hoe in owning and protecting it, but that with sufficient use, you might eventually be able to do so.
Want to explore this topic further for your business? Get in touch.