Trademark Strength

intro

Trademark Strength Impacts Enforceability

Generic trademarks and Descriptive Trademarks are the weakest

Trademarks are easier to register and enforce when they are strong, and trademark strength is measured by how easily the consuming public associates you with the mark. For example, if the consuming public commonly uses the same term to describe a type of product then that term is generic and has no trademark strength. Examples of generic trademarks include “Aspirin” for a type of pain medication, and “Zipper” for a type of fastener. These terms used to refer to specific the products by specific companies, but through public overuse of the terms they now essentially refer to the products themselves, regardless as to their source. Thus, the consuming public can no longer associate these terms with a specific source and they have become generic trademarks.

Sometimes a trademark is not quite generic but it is nevertheless merely descriptive of the product or service being offered. Merely descriptive trademarks have some trademark strength, but it is very low unless a company can present evidence that the public has learned to specifically associate that term with them. For example, American Airlines® is a descriptive trademark because it is literally an airline in America, but after nearly a century of being the only airline to use that name, it has nevertheless acquired its own distinctiveness in the term. But for most startups, descriptive trademarks like “Bob’s Ice Cream Stand” are weak trademarks and extremely hard to protect.

Suggestive trademarks are decent

In our experience, most marks are not merely descriptive trademarks, but rather suggestive trademarks that create a link in the consumer’s mind between the source and the product. Names like, Q-Tips® for cotton tipped swabs and Quick Stop® for a gas station are examples of suggestive trademarks. Suggestive trademarks are clearly stronger than generic trademarks and descriptive marks because the consumer is more likely to associate the mark with a specific source, rather than with the product itself.

Arbitrary/Fanciful trademarks are the strongest

For these same reasons, arbitrary marks and fanciful trademarks make the strongest trademarks. Arbitrary trademark examples include Apple® for computers, or Nike® for shoes. These trademarks are common words or phrases that have no discernable relationship to the product or service except for the fact that a company has built a brand around that term for that item––the consuming public has little choice but to associate that term with the product’s source rather than with the product itself. Likewise, fanciful trademarks are invented terms like Reebok® or Pepsi® for which the consuming public can only use the term to ascertain the product’s source, rather than the product itself.

Trademark Strength Increases Over Time

Supplemental registration trademarks evolve to become principal registration trademarks

The USPTO maintains a primary (or principal) register for strong or strong or distinctive trademarks and a secondary (or supplemental) register for weak trademarks. Most trademark search results display registered trademarks from both the primary AND the supplemental registers, and relevant principal and supplemental registrations can both be cited against your application by the USPTO. Further, both types of registrations enable your competitors to sue you in federal court if they believe you have infringed them.

However, because supplemental registrations have been placed on the secondary register for being weak, discovering that a competitor’s trademark is on the supplemental register is usually good news because it stands as proof that the trademark is weak. However, after five years of substantially exclusive and continuous use, a trademark on the supplemental register can be moved over to the principal register.

Principal registration trademarks evolve to become incontestable trademarks

Trademarks on the principal register are particularly threatening because they carry the presumption that they are strong, valid, and enforceable everywhere that the United States has laws. However, with proper evidence, someone can overcome these presumptions to show how the trademark is actually weak and unenforceable. This is the primary defense strategy in trademark litigation because, if it can be shown that the trademark is unenforceable, the Defendant wins.

However, once a trademark has been on the principle register for at least five years, it can be considered “incontestable” in court to these types of arguments. Incontestable trademarks are very powerful because they prohibit a Defendant at trial from even challenging their strength, barring very few exceptions.

Incontestable trademarks evolve to become famous trademarks

Through years of exclusive use and consumer recognition, a trademark may eventually be recognized as famous. Famous marks, like Disney® and Marvel®, are so well known by consumers that the mere use of these words on any product or service could impact the brand. Thus, because the famous trademarks are more prevalent in everyday society than other types of trademarks, they have access to additional tools and options in litigation that are simply not available to other brands.