Trademark Protection: Strong vs. Weak Marks
September 12, 2018
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.
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:
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.
Examples of arbitrary marks include the following:
Black and White scotch whiskey
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
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:
Bed & Bath - store for items for the bedroom and bathroom
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
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.
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