WHAT MAKES A STRONG OR WEAK TRADEMARK?
Not all trademarks are created equal. In fact, many are much stronger than others. Trademarks are generally characterized according to where they lie on a spectrum of distinctiveness, ranging from strong trademarks having significant consumer loyalty to weak trademarks having little ability to distinguish its associated goods or services from a competitor’s goods or services. Contact an experienced attorney who can provide you with the advice you need when brainstorming your branding options.
Table of Contents
- What is a Trademark?
- All Marks are Not Created Equal
- What are Acceptable Trademarks?
- What are Unacceptable Trademarks?
- Are Trademarks Commonly Registered?
- Contact an Experienced Attorney
WHAT IS A TRADEMARK?
A trademark or service mark is a word, name, symbol, logo, design, or any combination thereof that distinguishes the goods and services of one seller or provider from those of others and indicates the source of the goods and services.
All Marks are Not Created Equal
When a consumer can immediately identify the owner of a trademark as the source of the related goods or services, the trademark is considered strong. When a consumer cannot distinguish a trademark from other marks used by competitors, the trademark is considered weak.
It’s important to select a strong trademark because the strength of the mark can have a direct relationship to the performance of the good/service in the marketplace. In fact, some of the top brands in the world, such as Apple, Amazon, Microsoft, Google, are based on strong trademarks estimated to be valued at over $300 billion dollars. Other high-ranking brands, such as Heineken, Uber, and Zoom, are valued between $4–6 billion dollars.
What are Acceptable Trademarks?
Strong trademarks are typically creative or unique, which means that a similar mark would unlikely be used by your competitors. Strong trademarks include fanciful, arbitrary, or suggestive marks.
Fanciful Trademarks are made-up words that have no meaning separate from their goods or services. Such marks are often easy to register because there are no similar marks in the databases searched at the U.S. Trademark Office. Because a fanciful trademark has no meaning, the owner must often educate the public through advertising. Some examples include well known marks such as GOOGLE for online searches, ROLEX for watches, XEROX for copiers, and lesser known marks such as THANKSEE for electronic thank you notes.
Arbitrary Trademarks are actual words having a commonly understood meaning but have no association with the underlying goods or services to which they are associated. Similar to fanciful trademarks, the public must be educated as to the association of the arbitrary word with a particular good or service. Some examples include well known marks such as APPLE for computers, EXXON for oil and gas, KODAK for film, and DOVE for soap.
Suggestive Trademarks are actual words that suggest or hint at some quality of the goods or services, but the words do not describe the goods or services outright. Suggestive trademarks merely allude to the goods or services. Some examples include COPPERTONE for sun-tanning products, TIDE for laundry detergent, NETFLIX for online streaming service, and AIRBUS for airplanes.
What are Unacceptable Trademarks?
Weak trademarks are hard to protect against competitors and often are not federally registrable. These include descriptive and generic trademarks.
Descriptive Trademarks describe some aspect of your goods or services without identifying or distinguishing the source of those goods or services. Descriptive trademarks immediately give an idea of what the goods or services are. Descriptive marks are only registrable in certain circumstances, such as when a trademark gains distinctiveness through extensive use in commerce over many years. Some examples include ALL BRAN for cereal and HOLIDAY INN for lodging, CREAMY for yogurt, APPLE PIE for potpourri, and BED & BREAKFAST REGISTRY for lodging reservations services.
Generic Trademarks are not trademarks. They are a common, well-known name for goods or services and fail to indicate who the source of those goods and services is. Generic trademarks therefore do not function as trademarks and are not federally registrable. Some examples include SHREDDED WHEAT for wheat cereal, ASPIRIN for acetylsalicylic acid, and THERMOS for insulating containers, and SRIRACHA for chili sauce.
Are Trademarks Commonly Registered?
There are currently about 2.7 million trademarks registered and actively maintained in use in the United States. And each year the Trademark Office grants about 400,000 new registrations. But only around 30% of those 400,000 annual grants are issued after an initial review. So why do some applications for trademark registration sail right through the registration process while others are held up by the Trademark Office?
The stronger your trademark is, the better chance you have at registering the mark at the U.S. Trademark Office and the better chance you have at preventing others from using it without your express authorization. Weak trademarks can be difficult to register and costly to defend because they may be confusingly similar to other trademarks and require a significant investment in survey and other evidence to demonstrate the required distinctiveness.