What makes a trademark strong

Arbitrary Marks These marks include words that already exist and have a common, known meaning but not in relation to the goods or services for which they are used as brand names. Suggestive Marks These marks suggest some attribute or benefit of the goods or services, but do not describe the goods themselves. Suggestive trademarks require imagination, thought, or perception to reach a conclusion regarding the nature of the goods or services. Descriptive Marks Terms that immediately describe goods, services, or their characteristics cannot be protected as a trademark.

Descriptive words merely convey information and are not distinctive, and thus generally not protectable, since they simply describe some aspect of the goods or services, and do not serve to distinguish them from the goods or services of others. Geographically descriptive terms and surnames tend to fall in this category. However, it is possible for a descriptive word or phrase to become distinctive, and thus receive trademark protection, if the public has come to recognize the mark and associates the mark with the products or services as coming from one source.

Generic Marks A generic term or common words for a type of product or service such as dish washer, watch, popcorn, or credit card can never be a trademark or service mark for that product or service. You may wonder how descriptive and suggestive trademarks differ.

Descriptive trademarks immediately give an idea of what the goods or services are, while suggestive trademarks allude to the goods or services. As such, they do not indicate source and cannot function as trademarks. Therefore, generic trademarks are not federally registrable. For other assistance, please see our contact us page. Strong trademarks. Name optional. A disadvantage to suggestive marks is that they may be entitled to less-extensive and weaker protection than arbitrary, fanciful, or coined marks because there is a higher likelihood that someone else may be using a same or similar trademark suggesting the same or similar goods e.

The second strongest type mark is one that is formed of a word or words that have a common meaning, but that are used in a way that is otherwise not logically connected with the product or service. Because arbitrary marks are formed of words that consumers may already associate with another thing according to their dictionary definition there is, as with fanciful or coined, some education of the consumer required to develop the association between the mark and the product or service.

Arbitrary marks also typically receive broad and strong trademark protection as well because they typically are not used by others on such completely disconnected goods or services relative to the traditional meaning of the word or phrase. The strongest trademark is one that is completely made up, coined, or fanciful, because it is inherently distinctive having never existed before it was created to be a trademark.

Sometimes such marks are combinations of portions of other words, and sometimes there is no meaning or logic underlying them at all. If you are in the market for a new trademark, a fanciful or coined mark should be your goal from the perspective of trademark law because it is typically the easiest to register and receives the broadest and strongest forms of protection.

The potential drawback to a fanciful or coined word is that it may require more effort in terms of marketing dollars to introduce the mark to consumers and to build the brand and product recognition by educating the consumer since, at first glance, the consumer may not immediately understand what the product or service is, or whether they have a need for it.

They are also the most difficult types of marks to think of, requiring the highest levels of creativity and time and effort unless you are lucky enough to have a lightbulb go off while you are, e.

You may pursue registration of word marks or logos, or both. A registration for a word mark means that your mark is protected no matter what stylized form it takes. Some examples of truly unique logos that are strong include the Nike swoosh and the Amazon arrow. Keeping in mind the above discussion about the strength of marks, the goal when thinking of a new trademark is to try to identify a fanciful, arbitrary, or possibly suggestive word or phrase for your trademark that distinguishes your product or good from others in the market.

Stay away from generic, descriptive, and even suggestive marks if you are seeking a trademark that will have the ability to develop the strongest trademark rights. However, a suggestive mark is a reasonable compromise between creativity and inherent conveyance to the customer what products or services are being offered. Brainstorming a Mark. Caution: Marketing professionals almost always prefer marks that are instantly indicative of the product itself, because, logically, it makes the job of marketing the product or service easier when you do not have to explain what the product or service is.

However, from a trademark law perspective as discussed previously herein, descriptive marks are not registerable. There is often a debate that forms internally in a company between proposed trademarks that are more descriptive sometimes preferred by marketing professionals and marks that are more suggestive, arbitrary, or fanciful preferred by trademark professionals. It takes more time, effort, and creative energy to generate marks that are on the fanciful end of the spectrum, but it is worth the time and effort in the end because a more fanciful mark will be capable of substantially stronger trademark protection, which in turn protects your valuable brand and the marketing dollars invested in the brand over time.

The selection of a trademark can be a longer process than one might expect. Creativity is a key element to the identification of a trademark. When selecting a trademark, in addition to the above strength scale, also try to avoid similarities with other existing marks.

If you are planning to register the mark, one of the factors a Trademark Examiner considers when reviewing an application for registration is whether your mark is confusingly similar to another registered mark for the same or similar goods or services.

If it is, you will not be allowed to register your mark. Avoid marks that are similar to famous trademarks, or marks that are known in the particular industry, product, or service area of competitors to your product or service. For example, a mark that is registered for lawn and garden equipment is going to be considered to represent distinctly different goods from a new mark you may be seeking to register for a consumer product, or for network computing services, or for coffee, as your goods or services.

While it may sound attractive to try to create a trademark that is similar to that of a competitor providing similar goods or services to you, ultimately having a similar mark will only create problems that could result in additional legal costs, while also not achieving the primary goal of trademarks, which is to make your product or service stand out in the marketplace.

As your trademark becomes more well-known and better established, so do your reputation and the degree to which consumers recognize your brand, think of your products or services, and eventually become loyal to your brand. With that ultimate goal in mind, you can understand that it does not help you to be similar to a competitor in your space, because that will only lead to customer confusion and hinder your ability to build your brand.