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Introduction to Trademarks


 


Trademark Strength


Updated, August 2014


1. What is trademark strength, and why is it important?

The nature of a mark, particularly its relative strength or weakness, will have a direct bearing on its performance in the market and the scope of legal protection to which the mark is entitled. A mark that is highly distinctive functions as a strong mark, identifying the owner as the source of the covered products or services. When a mark is not inherently distinctive and/or it may already be used by others in connection with different products or services, the mark is considered weak. In general, the stronger a mark is, the easier it is for the mark to be registered and protected from unauthorized use by others.

2. How is a mark’s strength or weakness gauged?

The relative strength or weakness of a mark may be gauged by placing the mark on a spectrum, sometimes called a hierarchy of marks. The types of marks discussed below range from the strongest to the weakest.

  • Fanciful or Coined Marks: A fanciful or coined mark is at the strongest end of the spectrum because it is inherently distinctive. Such a mark consists of a combination of letters that has no meaning; it is an invented word. Examples are EXXON for petroleum products and KODAK for cameras and film. Since a fanciful or coined mark has no inherent meaning, it can have no other function than to identify and distinguish the owner’s products or services; however, because such a mark has no other meaning, the public must be educated through advertising as to the relationship between the invented word or phrase and the owner’s product or service before the public can associate the product or service with the mark. Because of their distinctiveness, fanciful or coined marks generally are afforded the broadest scope of protection against third-party use.

  • Arbitrary Marks: An arbitrary mark is composed of a word or words that have a common meaning in the English language but that are used in connection with products or services that are unrelated to that meaning. Arbitrary marks, such as CAMEL for cigarettes and APPLE for computers, are considered highly distinctive in identifying and distinguishing products since their meaning is unrelated to those products. Again, because of this arbitrariness, the public must be educated as to the association of the mark with the product or service.

  • Suggestive Marks: A suggestive mark hints at or suggests the nature of a product or service or one of its attributes without actually describing the product or service. An example of a suggestive mark is AIRBUS for airplanes. Suggestive marks can possess an inherent element of sales appeal and will require less education of the public than coined or arbitrary marks; however, generally they are entitled to less-extensive protection.

  • Descriptive Marks: Often, a word (or words) that merely describes a product or one of its ingredients or attributes is too weak to function as a trademark. An example of a merely descriptive mark would be COLD AND CREAMY for ice cream. Such a mark is unlikely to be granted registration, as the phrase merely describes an attribute of the product. Words that merely describe an attribute, feature, end result or use of the product, or the persons employed in its production, generally are not granted trademark protection. Merely laudatory terms such as “best” or “quality” also are generally not registrable. What is initially a descriptive word may, however, later become protectable as a trademark if it acquires secondary meaning. In other words, if a descriptive word is used exclusively as a trademark for some years, it may, in addition to having the primary meaning that is descriptive of the product, come to identify the mark as being associated with a single source of origin for that product. An example of a descriptive word that has acquired secondary meaning and become protectable as a trademark is SHARP for televisions.
  • Generic Words: A generic word or phrase is so inherently descriptive of a product or service or an entire class of products or services as to be incapable of ever functioning as a trademark. Generic words can be thought of as the common name of the product or service in question—for example, “clock” is a generic word for timepieces. Such words can never be appropriated by a single party as trademarks for the products or services they signify, since the public perceives and uses them solely as common nouns or terms. Generic words or phrases are not registrable or protectable in relation to the products or services they signify.

3. How do I select a unique and strong trademark?

Ideally, when choosing a new trademark, you will select a mark that is inherently distinctive. The strongest types of trademarks are (1) fanciful or coined marks, such as XEROX for copiers or GOOGLE for online services, and (2) arbitrary marks (marks that use a real word for a different type of product or service, such as APPLE for computers).


Additional INTA Resources

Considerations for Selecting a Trademark Fact Sheet

Trademark Portfolio Management Strategies Fact Sheet

Trademarks vs. Generic Terms Fact Sheet

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