Entrepreneur's Toolkit - Trademark Strength

What Is Trademark Strength?

Trademark strength refers to the distinctiveness of a trademark - the extent to which that mark has power to uniquely identify the source of goods (products) or services. Your mark is strongest when it is used only to refer to you and your products and services, and is not used by anyone else to refer to their products or services. In the case of a strong mark, if someone were to come in and either copy your mark or use something confusingly similar, you would be able to collect damages as a result of their use and/or prevent further confusing use. Trademark strength is determined in two respects: inherent strength and acquired strength.

What is inherent strength and how is inherent strength measured?

Inherent strength is the strength of distinctiveness a trademark has due to its ability to uniquely identify the source of goods or services by the mere fact of its selection or existence. Inherent strength is commonly spoken of in terms of a "spectrum of distinctiveness" that goes from least protectability (strength) to most protectability (strength) or vice-versa. The distinctiveness spectrum ranges from generic (least protectable) to descriptive, to suggestive, to arbitrary, to fanciful (most protectable).

• Generic marks are commonly nouns when used in spoken or written language, and are the generic or everyday names of the things they refer to. Generic marks cannot be trademarked, as the public has to be able to use the names of things when referring to those things. In some cases, even strong trademarks (e.g., fanciful names) can become generic and unprotectable if the public comes to associate the marks with the things themselves (for example, Aspirin and Escalator were once trademarks, but became the generic names for acetylsalicylic acid and moving staircases; Xerox and Kleenex were originally fanciful marks (see below) that have come close to becoming generic).
• Descriptive marks are or contain adjectives that directly describe or convey something about the product or services to which they are attached. Descriptive marks also include laudatory terms applied to goods or services (like "best," "fastest," etc.). The law presumes that everyone should be able to accurately describe their goods or services, so descriptive trademarks are generally not protectable as trademarks, but unlike generic trademarks, they can be protected if they acquire distinctiveness (see below). Surnames (last names) are generally considered equivalent to descriptive marks—Mr. Smith should be able to use his surname to advertise his wares. Marketing departments and specialists often have a tendency to lean toward recommending descriptive marks because it makes marketing the product or service easier.
• Suggestive marks are the lest strong type of mark that is considered inherently distinctive, and thus protectable. Suggestive marks suggest something about the goods or services without directly describing them. Thus, understanding the suggestive link of a suggestive mark requires some level of perception, imagination, or thought to understand the nature of the product or services with which the suggestive marks are associated.
• Arbitrary marks are ordinary dictionary words or phrases that are arbitrarily applied to goods or services without any natural connection between the ordinary word(s) and the associated goods or services. Arbitrary marks are so strong because there is little to no likelihood that those words will be naturally associated with the goods or services in ordinary language usage.
• Fanciful marks are invented (coined) words that aren't previously used (in any language) before they are applied to the goods or services. Many or most prescription drug brand names are fanciful marks, for example. Because the fanciful name never existed before, there is no chance anyone else could use that mark on their goods or services without copying the original, so fanciful marks are the strongest type of mark.

What is acquired strength or acquired distinctiveness?

Sometimes, trademarks that are toward the weaker end of the distinctiveness spectrum inherently (and are thus less protectable) can acquire distinctiveness by becoming uniquely associated with the provider of goods and services over time. Typically, acquired distinctiveness is associated with longstanding use by just one business, with significant advertising (and associated advertising costs), with consumers' growing experience and expectation of high quality, and similar considerations. This unique association in the minds of consumers grants additional value and strength to the trademark. While acquired distinctiveness can increase the strength of any trademark (excepting generic marks), the idea of acquired distinctiveness is most commonly discussed with respect to marks that are inherently descriptive (and thus just below the cutoff of protectability). Eventually, an inherently descriptive mark can be so strongly associated with one trademark user that it acquires enough distinctiveness to be protectable. For example, the surname McDonald (surnames being equivalent to a descriptive mark) has become so associated with one fast food seller as to become distinctive, even famous, and thus protectable, even against others sharing the same surname.

Why Does Trademark Strength Matter?

When you are selecting your trademark is the time to start thinking about your trademark strength. From a marketing standpoint, it feels natural to try to select company and product names that tell consumers about your products or services or that praise them. This tendency can result in weaker trademarks that cannot uniquely identify you as the source, and are thus difficult or impossible to protect. Accordingly, you will be unable to stop other users from adopting and using similar marks, and/or you will be forced to spend a lot of money distinguishing yourself from other users of similar marks. Weak trademarks have little to no value to your company. On the other hand, strong trademarks add value to your company and can last indefinitely as long as you keep using and protecting your marks.