When starting a new business and attempting to stand out from the crowd, it is important for business owners to consider how to go about building a strong brand. An essential part of creating good branding is developing a robust trademark. A trademark is a word, phrase, symbol, or design, or a combination thereof, that identifies and distinguishes the source of goods and/or services. Trademark law places marks into one of five (5) categories of relative increasing strength: generic, descriptive, suggestive, arbitrary and fanciful. Keeping these five (5) categories in mind when developing a brand can be the difference between obtaining a weak trademark that offers very little protection, and a strong trademark that allows the owner to readily enforce its/her/his trademark rights in the marketplace. As part of the process, a trademark lawyer can assist business owners in navigating through the nuances of trademark law in order to develop strong brands.
What defines each level of trademark strength?
The Five Levels of Trademark Protection
Generic marks rarely, if ever, receive statutory protection because they typically consist of little more than the specific names of the subject goods or services. For example, it would be impossible to get trademark protection for a bike shop by the name of “BIKES.”
Descriptive marks are weak because they only describe applicable goods or services. An example of a merely descriptive mark is HOT AND SPICY for hot sauce. Geographical terms and surnames are generally found to be descriptive marks as well. However, descriptive marks are eligible to be placed on the United States Patent and Trademark Office’s (“USPTO”) Supplemental Register (a secondary registry which offers owners rights, but not all of the rights afforded to owners of marks found on the Principal Register), and if, after five (5) years of continuous use in commerce, it can be demonstrated that the subject marks have acquired distinctiveness through consumer recognition, then they become eligible for placement on the Principal Register. An example of a mark that was deemed merely descriptive by the USPTO, but later proven to have acquired distinctiveness (and, thus, eligible for the Principal Register) is the SHARP mark for television sets.
Suggestive marks are strong marks that require consumers to exercise imagination to connect the subject marks with their associated products or services. An example of a suggestive mark is COPPERTONE. While COPPERTONE will not actually turn your skin the color of copper, the name, however, suggests that you will get a tan when using it.
Arbitrary marks are known words that have no actual connection with the products they are associated with. Arbitrary marks receive very broad trademark protection because the consuming public must be educated as to the association of the subject arbitrary marks with their related goods and/or services. Examples of arbitrary marks are APPLE for computers and VIRGIN for record stores.
Fanciful marks are invented words, such as GOOGLE and VERIZON. Fanciful marks are the easiest marks to register and receive the strongest protection. However, it is possible for fanciful trademarks to lose trademark protection if, over time, they are not properly protected and become generic to the consuming public and commercial competitors. Examples of marks that went from being fanciful to generic are ESCALATOR, HOVERCRAFT and TRAMPOLINE.
Hiring a Trademark Lawyer
Businesses that do not carefully consider the importance of trademark law early in their evolution can run into substantial roadblocks down the road. For example, if businesses have not undertaken a comprehensive search for competing brand names before deciding on a product or company name, they will likely receive cease and desist letters from third party competitors that could lead to the need to rebrand sometime in the future. In addition, if businesses have not taken into consideration the strength of their respective trademarks, they may be limited in their ability to prevent competitor use of similar marks down the road.
If you are interested in learning more about trademark law, or if you have been sued by a competing brand owner, please email us at firstname.lastname@example.org, or call us at (212) 246-0900.
The material contained herein is provided for informational purposes only and is not legal advice, nor is it a substitute for obtaining legal advice from an attorney. Each situation is unique, and you should not act or rely on any information contained herein without seeking the advice of an experienced attorney.
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