Introduction to Trademark Strength
A strong trademark effectively identifies goods or services in consumers' minds, distinguishing them from competitors and preventing the use of similar marks that could cause confusion about source or association. Strength is determined by the mark's distinctiveness—either inherent or acquired through secondary meaning—and factors like prior use or registration. Courts grant broader protection to stronger marks against infringement. Assessments of trademark strength can be subjective, as they involve human judgment based on visual stimuli, case precedents, and contextual factors, leading to potential variability among PTO examiners, judges, or experts. The focus should be on the rationale behind categorizations rather than absolute classifications.
A trademark differs from a generic term in that it identifies a specific brand, while a generic term describes an entire class of goods or services (e.g., "diet cola" for soft drinks, "lite beer," "super glue," "softsoap," "matchbox cars," or "supermarket"). Generic labels are unprotectable as trademarks because they lack distinctiveness and must remain available for public use to preserve language. Even if a mark gains widespread recognition, it can become generic through "genericide" (e.g., Aspirin, Escalator), losing protection entirely. Secondary meaning cannot salvage generic terms.
Trademarks can incorporate generic terms if combined with distinctive elements. For instance, in "Wildside Pet Shop," the full name may be protected, but "pet shop" must be disclaimed as generic, allowing others to use it with different distinctive components.
Identifying and Assessing the Distinctive Elements of a Mark
To identify the distinctive part of a word mark, separate the unique component from generic or descriptive identifiers. For example, "Apple" is distinctive in "Apple Computers," while "Computers" is not. In "Guess?" jeans, "Guess?" is the distinguishing element. Some marks are wholly distinctive combinations (e.g., "Trader Joe's" for food markets), but nondistinctive tails should always be disregarded when assessing strength.
Assessing the legal strength of a word mark involves evaluating the distinctive part's overall effect, including sound, appearance, meanings, typeface, color, shape, usage, and timing. Marks are categorized as distinctive (strong: inherently protectable without secondary meaning) or nondistinctive (weak: ordinary marks protectable only with secondary meaning). Strong marks receive nationwide exclusivity, while weak ones get limited local protection against confusion. Marks using common terms can be protected if the overall impression is distinctive, but not the terms alone. Misspellings or foreign equivalents do not inherently make ordinary terms distinctive.
Types of Distinctive Marks
Distinctive marks are inherently protectable and considered legally strong because they uniquely identify sources, foster consumer recognition, and impress memory through creativity. They qualify for the Principal Register, with protection scope depending on fame or strength—famous marks (e.g., Coca-Cola) can prevent dilution even without confusion. Varieties include:
Coined (or Fanciful) Terms: Invented words like "Blistex," "Kodak," "Exxon," "Rackafrax," or blends like "Unisys." These are the strongest, unique to the product or service, pronounceable, and appealing, but require marketing to build recognition. They receive broad protection against any commercial use.
Arbitrary Marks: Ordinary words unrelated to the goods or services, creating memorability through incongruity (e.g., "Apple" for computers, "Camel" for cigarettes, "Diesel" for a bookstore, "Penguin" for books). These are strong and warrant protection for their invested creativity.
Suggestive Marks: Hint at qualities without direct description, requiring a mental leap (e.g., "Roach Motel" for insect traps, "Greyhound" for buses, "Chicken of the Sea" for tuna, "Obsession" for perfume, "Sharp's" for nonalcoholic beer, "Intuit" for software, "Verbatim" for disks, "Banana Republic" for clothes). These are strong but slightly weaker than coined or arbitrary marks.
Other forms of distinctiveness include creative combinations (e.g., "Trader Joe's," "Pea in a Pod," "Double Rainbow" for ice cream, "Yahoo!" for services), double meanings, uncommon arrangements of ordinary terms, innovative appearances (e.g., "Toys 'R' Us" stylized, "Sc[i]3"), or novel designs applied to ordinary terms.
Types of Nondistinctive (Ordinary) Marks
Nondistinctive marks lack inherent distinctiveness and receive limited initial protection, as they are common, easily adopted by competitors, and risk depleting language if overly restricted. They include:
Descriptive Marks: Directly convey qualities or ingredients (e.g., "Whole Foods" for groceries, "Slim-Fast" for diet food, "Extra Strength Pain Reliever").
Geographic Marks: Indicate origin or region (e.g., "Downtown Barber," "American Airlines"). Deceptive ones (e.g., "Limoges" for non-French china) are unprotectable and risky for false advertising; deceptively misdescriptive (e.g., "Lovee Lamb" for synthetic seats, "Neapolitan" for Florida sausages) may gain protection only with secondary meaning.
Personal Names: Surnames (e.g., "Harris Sales," "Ford" for cars) or full names (e.g., "Paul Reed Smith Guitars"). These are weak until secondary meaning; first names or nicknames are even weaker but transferable without business sale issues, avoiding limitations on family use. Avoid famous namesakes to prevent infringement.
Initials: Depend on underlying words (e.g., "IBM" strong via secondary meaning; "AAA" weak).
Laudatory, Deceptive, or Misdescriptive Marks: Praise qualities (e.g., "Tip-Top Pet Shop") or mislead; purely deceptive ones are unprotectable.
Abbreviations/Acronyms: Treated as words; descriptive if conveying full meaning (e.g., "ACLU").
Foreign Terms: Equivalent to English translations (e.g., "Le Sorbet" = "The Sherbet," descriptive).
Alphanumeric Marks: Phone or word equivalents (e.g., "1-800-MATTRES" descriptive); designs may be protectable if distinctive.
State and federal unfair competition laws provide additional limited protection for weak trademarks against confusing uses, especially if implying affiliation, helping where trademark law alone is insufficient.
Gaining Strength Through Secondary Meaning
Ordinary or undistinctive marks can gain protection and strength via secondary meaning: consumer association with a single source through extensive use, sales, advertising, and familiarity (e.g., "McDonald's," "Kentucky Fried Chicken," "Dependable Dry Cleaners," "American Airlines"). Evidence includes surveys, sales volume, and ad spend. Once acquired, these marks are protectable like distinctive ones, but their initial weakness limits broad enforcement.
Composite Terms and Slogans
Composite terms are combinations of elements, evaluated based on the whole:
Ordinary composites are weak if descriptive (e.g., "Bette's Oceanview Diner") but stronger if evocative (e.g., "Houlihan's Old Place," "The Irish Sweep").
Word fragments or blends (e.g., "Ultraswim," "Microsoft") depend on usage; suggestive ones are strong (e.g., "Ultraswim" for shampoo), while descriptive are weak (e.g., "Bufferin" = buffered aspirin). Overused prefixes/suffixes (e.g., "web-," "compu-") weaken due to commonality.
Slogans are protectable if distinctive, either inherently (e.g., "Reach Out and Touch Someone" for phone services) or via secondary meaning. Avoid common phrases (e.g., "Why Pay More!") or descriptives (e.g., "Finest Salsa"). Use short, pithy promotions and disclaim weak parts in combined marks.
Guidelines for Creating Strong Trademarks
To create distinctive marks, leverage cleverness: ordinary words in unusual contexts (e.g., "Camel" for cigarettes, "Apple" for computers), interesting combinations (e.g., "Thistle Dew Inn"), novel designs, or suggestive hints without direct description (e.g., "Bloomers" for flowers). Avoid:
Weak marks: Ordinary, descriptive, or laudatory terms hard to protect initially.
Bad translations, homonyms, or connotations: Prevent unintended negative meanings (e.g., "Pschitt" for a drink, "Nova" car in Spanish).
Resembling well-known marks: Risk infringement or dilution (e.g., avoiding "Mc" prefixes or yellow arches like McDonald's).
Marketing considerations are key: Marks should be short, vigorous, easily spelled, pronounceable, memorable, graphically attractive (no hyphens), and legally available. Tailor to business needs, including customer base (broad/regional vs. select/national), demographics (tone/style, sophisticated vs. straightforward), buying habits (simple for rushed purchases, subtle for considered ones), product appeal (convenience/essence/image), competitive differentiation, and advertising media/visibility. Use foreign, mythological, or literary references for niche audiences or simple roots for broad ones.
To generate a good trademark name, form a committee, host brainstorming sessions, create personal lists, run contests, or use combinations. Develop long and short lists based on criteria, check domain availability, and conduct legal clearance before finalizing.