Trademark Strength
Trademark strength refers to how well a trademark can be protected against competitors, as well as the likelihood of the mark gaining federal registration. In order to have a strong trademark, it must be unique next to competitors and help consumers tell your goods/services apart from others on the market. Strong trademarks, especially those registered, offer your business greater protections against infringement.
In this article, we'll cover:
Strong vs. Weak Trademarks
Trademark strength is determined primarily by the mark’s distinctiveness. As the purpose of a trademark is to allow consumers to differentiate your goods/services from your competitors’, the more distinct the mark, the stronger it is.
A mark’s distinctiveness is primarily made up of two things:
- How original and unique the mark is as it pertains to your particular product or service
- How easily identifiable it is as a signal of your brand/business
The mark does not have to be unique in a creative way necessarily, only unique as it compares to competitors in your market.
All trademarks are required to be strong in order to have protections, whether that is common law trademark rights or registered trademark rights. A weak trademark fails at its main mission to offer distinctiveness to consumers, and it can be difficult-to-impossible to register and/or protect in court.
Despite this seemingly simple premise, some fail to realize that their trademark is not distinct. Particularly for word marks, many businesses want to use their business name or slogan as a trademark, and don’t realize that the use of generic words (such as the everyday name of the product or service they offer) can render the trademark weak. Much like a cup of a coffee, a stronger trademark is better than a weak one.
As designated by the United States Patent and Trademark Office (USPTO), the strongest trademarks include:
- Fanciful Marks – made up words that have no meaning outside of your goods/services
- Arbitrary Marks – real words that have no connection to your goods/services
- Suggestive Marks – words that hint at the goods/services but do not describe them
If all is well with an application, the USPTO is keen to approve marks in these categories.
On the other hand, weaker trademarks typically fall into one of these groups:
- Descriptive Marks – words that directly represent an aspect of the goods/services
- Generic Marks – words that say exactly what the goods/services do and/or offer
Except in cases where descriptive marks have acquired brand relevancy in the minds of consumers, they are unable to be registered (unless placed on the Supplemental Register—more on that later).
And according to the USPTO, generic trademarks “aren’t even trademarks” as they simply name the product or service itself. Generic marks cannot be federally registered.
Principal Register vs. Supplemental Register
When the USPTO approves a trademark, it is assigned to one of two registers: the primary Principal Register or the secondary Supplemental Register. Which register an approved trademark will be put on boils down to one big question: how distinct is the mark?
- Principal Register
Strong, distinct trademarks qualify for the Principal Register. Trademarks on the Principal Register have all the rights of a federally protected trademark, including the ability to record registration with U.S. Customs and Border Protection to aid the prevention of infringing imports and, importantly, the presumption of ownership. These robust protections offer a strong hand against infringement cases.
- Supplemental Register
Weak trademarks may qualify for the Supplemental Register. The assumption is that these indistinct trademarks might reasonably one day be distinct, such as when descriptive marks gain additional meaning through use. Trademarks on the Supplemental Register are allowed to use the registered symbol ®, but they are not incontestable. This means there is no presumption of ownership, and even though supplemental mark registrants can sue for infringement in federal courts, they still have to prove that they own the trademark.
Get the ball rolling on your federal trademark registration today with our Trademark Service!
Choosing a Strong Trademark
Choosing a trademark, especially a very strong one, is a careful dance between creativity and legal requirements.
Strong marks are generally creative, unique in an industry, and distinct. They might take an everyday word and apply it to an entirely new industry, such as Apple for a tech company, or create an entirely new word that will only be used in connection to the brand, such as Google.
Though the process of choosing a strong trademark looks different for everyone, answering these questions can get you on the right path prior to applying for USPTO registration. Ask yourself:
- Does my mark have a literal meaning?
If your mark has a literal definition attached to it, consider what consumers think of automatically when they hear it.
For example, the brand Off! sells bug spray, among other things. The literal definition here invokes the idea of something being repelled or kept away. This is a suggestive mark because it nods towards what the product does while not being an exact description.
By considering what the literal meaning of the mark is, you can see if 1) it works with your product and 2) which strength level it mostly likely lives in.
- Does someone else already have my mark?
Though being distinct is an element of a strong trademark, complete uniqueness is not a requirement. For example, Morrison Milling’s Peter Pan flour is unlikely to be confused with Peter Pan Bus Lines, because baking ingredients and transportation are entirely unrelated. There must be likelihood of confusion, or a chance that consumers could mistake the source of one product/service with another, in order for it to be disregarded by the USPTO on the grounds of uniqueness.
That being said, there are exceptions to this when famous marks enter the picture, due to a concept called dilution. McDonald’s is such a household name, for example, that it is highly unlikely another company could trademark something with the preface “Mc” because McDonald’s has a stronghold on that market. Another company including “Mc” in a trademark could “dilute” the McDonald’s brand.
Conducting a thorough trademark clearance search can help you see if your mark or something similar is already being used, who’s using it, and for which goods and services.
- Which trademark strength “level” does my trademark hit?
Once you’ve considered your mark’s literal meaning (or lack thereof) and its place in the market, you can likely figure out where it lands on the strength scale. Like the strongman’s game at the county fair, you want your trademark to “hit” high strength. Think of generic marks as the very bottom, like your mallet barely made contact with the sensor. Climbing up higher, the other “levels” lead to a fanciful mark, the strongest of all. The harder your “hit,” the stronger your mark. The stronger your mark, the better chance you have of receiving USPTO approval.
In order to reduce the risk of office actions or flat out rejections, it’s helpful to apply for registration with the strongest mark possible.
