How to Select a Legally Strong Trademark

A legally strong trademark can end up being just as important to your business as offering a strong, high-quality product or service – if not more so. Therefore, it’s worth taking the time to learn more about what constitutes a legally strong trademark.  The Lanham Act, which is the name of the federal trademark law in the United States, rewards trademarks that are unique and do more than simply describe a product or service.  Let’s take a closer look, from weakest to strongest.

Generic Trademarks: A generic term can’t actually be trademarked – any trademark application where the intended mark is considered a generic term will be refused. So what is a generic name? It’s one that simply consists of the name of the product or service you’re offering: “Big Necklaces,” for the name of a brand of jewelry would be considered generic, or, “The Trademark Law Firm” for the name of a law firm that offers trademark services.  Since these are the common words used to simply identify goods or services they can’t be reserved for use by any one party in particular.

Descriptive Trademarks: A descriptive mark goes a step beyond a generic term by focusing on a quality of the product or service that you’re offering, and using that as a trademark. Like generic terms, descriptive marks are often commonly used words or phrases that may be difficult to distinguish from one another. For this reason, descriptive trademarks are considered the weakest mark that may actually be approved, and, if approved, are only given a very narrow scope of protection. One way to improve your claim to a descriptive mark is to strengthen it through substantial advertising. If you can prove that a descriptive mark is closely associated with you and you alone, you’ll have greater protection and a better likelihood of trademark approval.

Suggestive Trademarks: These marks are connected to your product or service in some way, but aren’t directly descriptive of it. They require a bit of thought to make the connection, but are still in some way related to your offering – they might refer to a result of your product, or a solution it provides, for instance, but in a vague way. Since these are considered more creative and unique marks that don’t, on their own, conjure an association with a product or service, they have a higher likelihood of approval by the USPTO, with broader protections.  An example of a suggestive mark would be Amazon for the name of a large on-line retailer.  The word Amazon may make one think of the largest river in the world.   In this case the use of the word ‘Amazon’ for an on-line retailer is a nifty way of saying this is the world’s largest marketplace.

Arbitrary Trademarks: An arbitrary term is an existing word or phrase that would not normally be associated with your products or services. These are considered very strong trademarks, since you are conferring a new, unique meaning to an existing term based on your business.  For example “Apple” is an arbitrary trademark for the name of a computer company.  The computer clearly has nothing to do with a piece of fruit.

Fanciful Trademarks: Fanciful trademarks are the strongest, most well protected marks, with the highest likelihood of approval. A fanciful mark consists of a brand-new, made up word or phrase (such as ‘KODAK’). Since by definition such a term has never been used before, a trademark for a fanciful word or phrase is difficult if not impossible to challenge. Many of the strongest marks in the world are fanciful terms, but you might not even recognize them as such at first – that’s how strong they are, and how much brand equity they’ve built into their name.

How that you know how to choose a strong trademark, let’s go over some reasons why it’s so important to have a strong mark.

You have a better chance of approval for your trademark application. The lower down the scale a trademark is, the lower your chances of approval – and the greater the chances that you’ll run into problems of similarity (or identical marks). As you’ve seen, the more unique a mark is, the more legal protection it is ultimately afforded under the Lanham Act.

You have a better defense of your mark after approval. Even if the USPTO approves a mark in the middle or lower end of the strength spectrum, that doesn’t automatically make it immune to challenges by others. Weaker marks are more vulnerable to attacks from other parties who may try to make the case to the USPTO that your mark is too broad or too close to a generic term to receive continued exclusivity and protection. The stronger, fanciful or arbitrary marks are better-protected from these kinds of claims.

You’ll stand out better in the marketplace. This one is not strictly trademark-related, but holds practical significance for your business. Trademarks exist to prevent confusion to consumers and clearly identify your products or services in the marketplace. Stronger trademarks are classified as such because they are deemed to least likely to confuse consumers based on their unique qualities – either they are completely made-up words or phrase that hold no pre-existing meaning, or they are existing words that have absolutely nothing to do with your product or service.

The branding benefit of these marks is that the consumer is able to identify them with you, and you alone. Weaker marks, even if approved, are more likely to be confused with other trademarks that may be similar in some way, or hold unconscious associations for consumers. The more unique you are and the stronger your trademark, the better consumers will recall your brand name and offering – leading to a better bottom line.

Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.

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