Not all trademarks are created equal

Not all trademarks are equal in strength and the scope of exclusive protection they are afforded.  The strength of a mark is determined based on the mark’s ability to be distinctive of the of goods and services offered under the mark.  In other words, the strength of a mark is based on how effective it is in distinguishing one source or provider of the goods or services from another.  After all, trademarks are source identifiers, and not product or service category identifiers.

Distinctiveness is measured along a continuum of four levels of strength by comparing the mark with the goods and services that are being offered under the particular mark, as follows:

Generic Marks:

At the bottom of the continuum are generic marks, which describe a general class of goods or services.  For example, “aspirin” is a generic mark which identifies the general class of goods called pain relievers.  Because generic terms describe an entire class of goods, they are unable to identify a particular source of pain reliever.  As such, generic marks can never function as trademarks.

Descriptive Marks:

The weakest marks are descriptive marks, which simply describe some quality, characteristic, attribute, or result of the good or service.  Because descriptive marks describe the goods/services themselves, they are not effective at distinguishing the source of those products, until the descriptive term acquires distinctiveness and attains “secondary meaning” in the marketplace.  That is, if the descriptive words take on a second meaning, apart from their descriptive meaning, which functions to identify the source of the goods/services offered thereunder in the marketplace then these words function as a trademark.  For example, the mark THE HOME DEPOT is considered descriptive of “home improvement store services” that are offered under the mark.  However, through continuous long-term use and promotion, THE HOME DEPOT mark has attained secondary meaning and now functions as a trademark and source identifier.

Suggestive Marks:

Increasing in strength are suggestive marks, which are inherently distinctive and automatically have trademark significance as source identifiers.  Suggestive marks do not directly describe the product or service offered thereunder, but rather, suggests some quality or attribute about the goods or services that a consumer arrives at through the use of their imagination.  For example, AIRBUS is a suggestive mark used in connection with airplanes, which conjures in one’s mind an air transport vehicle, without merely stating “air transport vehicle.”

Arbitrary and Fanciful Trademarks:

Also, inherently distinctive, and at the top of the strength continuum are arbitrary and fanciful marks.  Arbitrary marks are common words that have no relationship or association to the goods or services that are offered thereunder.  An example of an arbitrary mark is APPLE for computers.  Fanciful marks include a made up or “coined” word or phrase that has no meaning.  ROLEX, is an example of a fanciful mark for luxury watches.

The formation of a brand and the marks that support the communication of the brand’s messaging to the public are one of the first things that should be considered during the development of a marketing strategy for a new product or service.  Selecting marks that are strong, such as suggestive or arbitrary/fanciful marks, which are afforded a broader scope of protection than descriptive marks, facilitates trademark enforcement efforts against competitors.  In particular, the increased strength of a mark allows a wider boundary to be built around your brand’s intellectual territory, so that it is kept separated and distinct from that of other competing brands.  This ensures that the spotlight, brand awareness and acclaim generated through your brand’s advertising and promotion remains squarely on your brand, and is not shared with competitors that strategically endeavor to leverage the public’s awareness of your brand by using a similar mark to your brand in an effort to confuse unsuspecting customers into purchasing competing products by mistake.

If you are developing a brand or extending a current brand into new products or services, and have questions about selecting a strong trademark, please contact me to discuss a strategy that is the best fit for your marketing efforts.

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