How to Select a Strong Trademark - the Spectrum of Trademark Strength

How to Select a Strong Trademark - the Spectrum of Trademark Strength

  • 02 July, 2018
  • Nyall Engfield

 How to Select a Strong Trademark

Start by developing a list of potential marks, and then search each class of goods and services for a similar mark, and finally think about how the mark will be perceived by the relevant consumers.

In developing a list of potential trademarks, consider the relative strength of marks. A strong or distinctive mark is easier to  protect from use by others than more descriptive—and, therefore, weaker—marks. The following is the spectrum of distinctiveness of a brand, from a trademarking point of view:

Spectrum of Distinctiveness of a Brand Name, from Weakest to Strongest:

  • Descriptive Marks: Descriptive marks identify the product without imagination, thought, or perception. They are difficult to register since descriptive terms are supposed to be reserved for all competitors in the field, so they may freely use them to describe their products. Also, laudatory terms like "best" or "great" are descriptive.  An example is BEST FOODS for mayonnaise. However, with consistent use in the marketplace over years, a mark may acquire distinctiveness and be registrable.
  • Suggestive Marks: Suggestive marks indicate a characteristic or feature of a product, and may suggest an idea regarding the product or service, but this will requires some though or imagination on the part of the customer. Examples of suggestive marks are KREEMY for ice cream or YUMMY YUMMY for chips. 
  • Arbitrary Marks: Arbitrary marks comprise words that have a normal meaning but are used with a product or service that is unrelated to that meaning. An example of an arbitrary mark is APPLE for computers. Arbitrary marks are stronger than suggestive or descriptive marks, but are not quite as easy to defend as coined or fanciful marks.
  • Coined Words: A coined word, or made-up word, that has no meaning other than as a trademark is the strongest type of trademark. MOBIL, SAMSUNG, and KODAK are well-known examples of coined word trademarks. Coined marks may be more difficult for consumers to remember at first because they don't have any meaning, a trademark owner can provide a positive relationship between consumers and the product using the coined word. When this goodwill has been created, it is easier to defend the mark against unauthorized use and the mark will generate a specific meaning in a consumer's mind.

Trademarks that may not be registered:

  • Generic Terms: A common term in use for a product or service, which must be kept available to people to use to refer to the product or service. When a product comes into common use, people sometimes refer to the product by that name, making the trademark generic and unprotectable in the long run. Kleenex for tissue and Xerox for copiers are classic examples of terms that once functioned as trademarks but that, through lack of protection, became generic and now are used as the common names for the products, regardless of their source. The trademark owners have worked hard to keep the name from common use for the product as generic terms are not registrable or protectable.
  • Names/Surnames/Geographic Locations: There is a general prohibition against registration of a trademark that is merely the name of an individual, a surname, or the geographic location where the products are made or from which the services emanate. For example, MCDONALDS may not be registrable, as it is primarily merely a surname which may be shared by a number of people who may want to use it for products or services. However, consistent use over a period of time may make the trademark distinctive and therefore registrable. Geographic indications for food or drink are similarly not protectable except through a special protection that is available to all manufacturers who fulfill the criteria of the food or drink. An example is that only sparkling wine grown in the Champagne region in France, made from specific grapes, may be labelled as Champagne.
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