Trademark Strength

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

A trademark is a sign that allows the consumer to distinguish the products of one company from identical or similar products of other companies. The sign (such as a word or logo) can only fulfill this function of distinguishing products, if the sign is recognized as a trademark (that is, it’s distinctive) relative to the products or services for which it is used. The level of distinctiveness (that is, the trademark strength), especially for word marks, can be illustrated on a spectrum. The categories in this spectrum are sorted from the strongest signs to the weakest:

• Fanciful Marks—These marks are also sometimes called coined marks or invented marks. This category includes signs that have no inherent meaning and were especially created to be trademarks. Examples of such fanciful marks are GOOGLE or ROLEX.
• Arbitrary Marks—This category includes words that actually exist and can be found in a dictionary. However, such marks are used for products that are completely unrelated to the meaning of the word. Prominent examples are APPLE for computers and other electronic gadgets, AMAZON for retail services, and DOVE for personal care products and for chocolate.
• 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—This category includes signs that clearly describe the product or service itself or features of the product or service (for example, by including an ingredient, quality, characteristic, function, feature, purpose, or use). Even if the term is in a different or archaic language (such as Latin), the sign will be considered to be descriptive, if the term is commonly understood in the jurisdiction where it is sought to be registered. An example of a descriptive term is COLD & CREAMY for ice cream.

  Generally, such terms are not granted trademark protection. However, it is possible that over time consumers begin to associate the descriptive term with a specific source of origin, even if they don’t know the name of the company. This effect is called “acquiring secondary meaning” or “acquiring distinctiveness”. If this “secondary meaning” or “acquired distinctiveness” can also be proven to the Trademark Office, the term can be registered as a trademark. 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—Generic words or phrases are the common name of a product or service, or type of product or service. For example, “clock” is a generic word for a timepiece. Since the public perceives and uses generic words as common nouns and all parties offering “clocks” (to use our example from above) should be able to use that term in the course of business, generic words or phrases are not registrable or protectable in relation to the products or services they signify.

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

To avoid expensive and time-consuming proceedings, it is helpful to choose a strong trademark (from the first two categories listed above). However, this means that the trademark itself does not “speak” about your product or service, as it does not generate any immediate association. As such, advertising costs will initially be higher, as the public needs to learn what this trademark stands for.

If one decides to use a mark that does “speak” about their product or service and immediately generates associations in a consumer’s mind, it is important to understand that the decision whether a specific sign is suggestive (and therefore registrable) rather than descriptive (and therefore not registrable without secondary meaning/acquired distinctiveness), is oftentimes very subjective. Borderline terms might be registered in some jurisdictions but rejected in others, even if they are filed for the exact same goods/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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