Watson IP Group

Watson IP Group

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What Makes a Strong or Weak Trademark?

There are strong trademarks and there are weak trademarks. The relative strength of a trademark lies on a spectrum that has fanciful marks at one end and generic marks at the other end. Specifically, the entire spectrum consists from strongest to weakest, Fanciful, Arbitrary, Suggestive, Descriptive, and Generic. The first three are registrable immediately. The last one is never registrable. It is the penultimate one, a descriptive mark, which lies in between. As explained below, descriptive marks may be registrable, depending on circumstance. At the same time, there is a fine line between descriptive and generic on the one hand, and descriptive and suggestive on the other end. And, often it is necessary to argue to the Examining Attorney at the USPTO as to the distinctiveness (i.e., non-genericness and non-descriptiveness) of a particular mark when used with particular goods.

And, trademarks can be of different strength when associated with different goods. An apple is generic of an apple, but arbitrary for computers.

The various different categories are discussed below:

Fanciful marks are at the strongest end of the spectrum. They are inherently distinctive, as they have no meaning. Well known examples of fanciful trademarks include XEROX, EXXON, POLAROID.

Arbitrary marks are the next strongest. These marks typically have a commonly known meaning, but they are completely unrelated to the goods or services. Well known examples of arbitray trademarks include APPLE for computers; SHELL for gasoline, CAMEL for cigarettes.

Suggestive marks are the next strongest. Suggestive marks are typically associated with a characteristic of the product or service, but a mental leap is required to make the connection. Well known examples of suggestive trademarks include AIRBUS for aircraft; RAIN DANCE for water repelling coatings, CARMAX for used car dealerships.

Descriptive marks are week. Descriptive marks are descriptive of the product or service with which it is associated. These are only capable of receiving Federal Trademark Registration on the principle register if they have acquired distinctiveness through use. In other words, if consumers identify the mark as an indicator of source due to the use by the owner, then they may be registered. Well known examples of descriptive trademarks include BRITISH AIRWAYS for an airline from Britain, PARK ‘N FLY for a parking lot that is by an airport, BEST BUY for electronic stores.

Generic marks are not capable of registration. These are the actual terms by which something is referred, and everyone should be able to use the term for the same goods. Well known examples of generic trademarks include ZIPPER for a zipper; ASPIRIN for aspirin; YO-YO for a yo-yo.

As can be appreciated the lines between Suggestive marks and Descriptive marks is quite blurry. That is, the analysis is rather subjective, and it is possible to argue that a mark is Suggestive after receiving a rejection from an Examining Attorneys indicating that mark for which you have applied is rejected as being descriptive. It is also possible to argue that a descriptive term has become distinctive through your use of the mark in commerce. These arguments are often quite complex, but, are the types of arguments that are routinely and successfully presented in response to a rejection.

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