Choosing a Strong Trademark
July 15, 2010 No Comments
Businesses of every size have trademarks and may have rights they aren’t aware of. The legal definition of a trademark (or “mark”) is a word, name, symbol or device used in connection with the sale of products or services. While some marks are very well known — the Nike “swoosh” symbol and the phrase “Intel Inside” are good examples — a mark does not have to be famous in order for its owner to acquire rights in that mark. Whether a word or name is protectable as a mark is determined by its strength.
The strongest marks are fanciful, such as made up words like “Xerox”, or arbitrary, English words that have nothing to do with the product or service they are used with, such as “Apple” for computers. The next category of strength below arbitrary or fanciful is suggestive. A suggestive mark suggests, but does not directly describe, the qualities associated with the word in connection with the product or service with which it is used. An example is “Apple-A-Day” used in connection with vitamins. “Apple-A-Day” is associated with being healthy which is a characteristic that comes to mind when thinking about vitamins.
The next type of marks is descriptive. Descriptive marks immediately convey a characteristic of a product or service, such as “5 Minute Workouts” as a mark for series of workout videos that can be completed in five minutes. Descriptive marks are very weak and may be difficult to register or enforce.
The weakest category is generic marks. A mark is “generic” if it is commonly used for the general name for a product rather than for identifying a particular source of a product. “Thermos”, “escalator”, and “aspirin” are examples of marks that have become generic because the public commonly thinks of and uses these terms to name the products themselves rather than to identify a specific source or origin for them.
Businesses should strive to choose arbitrary, fanciful, or suggestive marks. The distinction between suggestive and descriptive marks is very fact sensitive and may not be readily apparent. Businesses should consult with an experienced trademark attorney before adopting any new mark to ensure their mark is protectable.