Trademark Protection: Strong vs. Weak Marks

September 12, 2018

Author: Marcela Dye

Strong vs. Weak Marks

 

A trademark is a powerful economic tool for your company. Consumers’ decisions are often influenced by trademarks and the reputation such marks represent.

 

When your company holds trademark protection, it protects your investment in the quality of the goods or services your mark identifies, and it becomes easier for consumers to locate your company. A common misconception is that registering a mark guarantees trademark protection; however, registration does not guarantee protection. 

 

Some marks are deemed “strong” while others are deemed “weak”.  Strong marks are afforded the greatest protection. As a general rule, arbitrary and fanciful or suggestive marks are considered strong.  Descriptive, geographic and personal name marks are considered weak.  “Generic” marks are afforded no protection.  Generic terms are words we use in everyday speech, such as chair, desk, car, etc.  No one has the exclusive right to use generic terms.

 

Therefore, before investing time and money into a trademark, consider whether your mark is strong enough to achieve the greatest level of protection.

 

 

Strong Marks - Fanciful, Arbitrary and Suggestive Marks

 

FANCIFUL MARKS consist of coined words that have been invented or selected for the sole purpose of functioning as a trademark.  Such marks comprise words that are either totally unknown in the language or are completely out of common usage at the time, as with obsolete or scientific terms.  Fanciful marks are referred to as the strongest of all marks.  Being a strong mark has significance in that the mark will then be given an extensive scope of judicial protection into different product or geographical markets.

 

Examples of fanciful marks include the following:

 

Clorox bleach

Q-Tex cuticle-removing liquid

Kodak photographic supplies

Polaroid photographic supplies

Exxon gasoline

Yuban coffee

Sanka coffee

Xerox photocopying equipment

 

Although fanciful marks receive the strongest judicial protection, they are often not practical from a business and merchandising point of view.  Any good marketing person will tell you that your mark should help “sell” your product by telling the buyer something about the product or service offered.  Unfortunately, descriptive marks are more difficult to protect as trademarks.  Further, descriptive marks may be already in considerable use in closely related product fields.  In this sense, they are “weak” marks because they are in a crowded market of similar marks.

 

 

ARBITRARY MARKS are closely related to fanciful marks in that they are also “strong”.  Arbitrary marks comprise those words, symbols, pictures, etc. that are in common linguistic use but which, when used with the goods or services in issue, neither suggest nor describe any ingredient, quality or characteristic of those goods or services.  “Arbitrary” means that the ordinary meaning of the word mark is applied to goods in a totally arbitrary and non-descriptive sense.  For example, Ivory Soap is not made of ivory.  Old Crow Whiskey is not distilled from old crows.

 

Examples of arbitrary marks include the following:

 

Black and White scotch whiskey

Horizon banking services

Jelli Beans roller skating rink

Mustang motel

Nova television series

Sun bank

Sun computer hardware and software

Camel cigarettes

Rainbow bread

Shell gasoline

Arm and Hammer baking soda

Apple computers

 

Note that none of these words conjure up any mental reaction that is connected with the product at all.  That is, the words used in the mark do not in any way describe anything about the product at all.  The juxtaposition of the mark and the product is purely “arbitrary”. 

 

 

SUGGESTIVE MARKS "suggest", but do not describe particular goods or services. Suggestive marks known as the middle ground between fanciful marks and descriptive marks; however distinguishing between suggestive marks and descriptive marks is sometimes difficult. 

 

Examples of suggestive marks include the following:

 

Action slacks - pants

At-a-Glance - calendars

Chicken of the Sea - tuna fish

Citibank - urban bank

Handi-Wipes - dusting cloths

Hula-Hoop - plastic hoops

Orange Crush - orange drinks

Roach Motel - insect trap

Tail-Wagger - dog food

Wireless Now! - on-line information services

Wrangler - western boots and jeans

 

 

Descriptive, Geographic and Names - the “Weak Marks”

 

DESCRIPTIVE MARKS describe particular goods or services.  Fanciful, arbitrary and, as discussed above, suggestive marks are given legal protection immediately upon adoption and use and do not require secondary meaning.  Marks that are descriptive, geographic, or personal, corporate business or professional names all require “secondary meaning” in order to be protected by the courts, even if registered.  

 

As a general rule, secondary meaning exists when the public associates the product with a single source.  Secondary meaning is established by the following evidence:

 

Direct Evidence

1. Direct consumer testimony

2. Customer surveys

 

Circumstantial Evidence

1. Exclusivity, length and manner of use

2. Amount and manner of advertising

3. Amount of sales and number of customers

4. Established place in the market

 

Names that are considered descriptive are the following:

 

Bed & Bath - store for items for the bedroom and bathroom

Beef and Brew - restaurants

ChapStick - skin preparation in a stick

FirstBank - banking services

Intelligent Modem - modem

Raisin-Bran - raisin and bran cereal

Tender Vittles - cat food

Vision Center - optical clinic

World Book - encyclopedia

 

 

Generic Marks - No Protection

 

Generic names are words that are either part of our everyday speech or have started out as trademarks, were not protected, and have evolved into generic terms.  This is why some companies spend so much energy protecting their trademarks.  Kleenex, Q-Tips and Coke all fight vigorously to insure their names do not become generic for facial tissues, cotton swabs and soft drinks.

 

The following marks have been held to be generic and unprotectable as trademarks:

 

All News Channel - television broadcasts

Aspirin - acetyl salicylic acid

Baby Oil - mineral oil

Cellophane - transparent cellulose sheets and films

Cola - type of soft drink

DOS - type of computer operating system

Escalator - moving stairway

Light Beer - beer light in body and taste

Matchbox - toy cars in matchbox-sized boxes

 

This Article is published for general information, not to provide specific legal advice. The application of any matter discussed in this article to anyone's particular situation requires knowledge and analysis of the specific facts involved. Copyright © 2018 Fairfield and Woods, P.C., ALL RIGHTS RESERVED.

 

Comments or inquiries may be directed to:

Marcela A. Dye, J.D.

mdye@fwlaw.com

Direct Dial: (303) 894-4406