Fact Sheet: Introduction to Trademarks

Trademark Strength

Updated: November 5, 2020

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 on its scope of legal protection. A “strong” mark is a mark that is highly distinctive, thus immediately identifying the owner as the source of the covered products or services. When a mark is scarcely distinctive,, then the mark is considered “weak.” In general, the stronger a mark is, the easier it is for the mark to be eligible for registration and to obtain protection from unauthorized use and registration 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, also 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; thus, it is an invented word. Examples are GOOGLE for online services, ROLEX for watches, and XEROX for copiers. Since a fanciful or coined mark has no inherent meaning, in the beginning a bigger effort in terms of advertising is necessary in order to educate the public as to the relationship between the invented word and the owner’s product or service. However, these marks enjoy 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 language of the relevant jurisdiction; however, that meaning is unrelated to the goods or services for which the mark is used. Arbitrary marks, such as DOVE for chocolate or soap and APPLE for computers, are considered highly distinctive in identifying and distinguishing products or services. As with fanciful or coined marks, the public must be educated as to the association of the arbitrary mark with the relevant product or service, but the scope of protection obtained is very broad.
  • 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. Examples of suggestive marks are AIRBUS for airplanes and NETFLIX for streaming services. Suggestive marks hint at the relevant product or service without actually describing it; they possess an inherent element of sales appeal and will require less education of the public than coined or arbitrary marks. For this reason, generally, suggestive marks are entitled to meaningful but less extensive protection.
  • Descriptive Marks. In general, a descriptive mark is a word (or words) that merely describes a product or its ingredient, quality, characteristic, function, feature, purpose or use. An example of a merely descriptive mark would be COLD AND CREAMY for ice cream. Marks of this type are generally not granted trademark protection. Merely laudatory terms such as “best” or “quality” also are generally not registrable. In some jurisdictions, surnames are treated as descriptive marks. However, what is initially a descriptive word may later become protectable as a trademark if it acquires secondary meaning. In other words, if a descriptive word is used and advertised exclusively as a trademark for a sufficient period of time, 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.  Examples of  descriptive words that have acquired secondary meaning and become protectable as  trademarks are SHARP for televisions and HOLIDAY INN for hotel services.
  • Generic Words. A generic word is what the public understands to be 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 and all parties offering “clocks” should be able to use that term. Generic words or phrases are not registrable or protectable in relation to the products or services they signify. A term that was not generic originally can, under certain circumstances, become generic when a majority of the relevant consuming public comes to consider it the name of the product. Examples of originally valid trademarks that have become generic in many jurisdictions – where they are no longer protected – are ASPIRIN and CELLOPHANE.

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 EXXON for petroleum products; and (2) arbitrary marks, such as AMAZON for retail services.

Additional Resources

Considerations for Selecting a Trademark Fact Sheet
Trademark Portfolio Management Strategies Fact Sheet
Trademarks vs. Generic Terms Fact Sheet

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