Choosing the right trademark is one of the most important branding decisions a business can make. A strong trademark helps customers identify your business, separates you from competitors, and creates long-term value for your company. Just as importantly, selecting the wrong trademark can lead to expensive legal disputes, weak brand protection, and difficulty obtaining federal registration with the United States Patent and Trademark Office (“USPTO”). For startups, entrepreneurs, and growing businesses, understanding trademark strength at the beginning of the branding process can help avoid major problems later.
What Is a Trademark?
A trademark is a word, phrase, logo, slogan, or other identifier that distinguishes your goods or services from those offered by others. Trademark law gives trademark owners the ability to stop competitors from using confusingly similar marks for related goods or services. The strength of a trademark often determines how broad that legal protection will be. In general, the stronger the trademark, the easier it is to enforce and protect.
Understanding the Trademark Strength Continuum
Not all trademarks are created equal. Trademark law recognizes a spectrum of trademark strength ranging from highly distinctive marks to terms that receive no protection at all.
1. Coined Marks: The Strongest Type of Trademark
Coined trademarks are considered the strongest and most protectable marks. These are completely invented words that have no meaning other than identifying the brand itself. Examples of coined marks include GOOGLE and KODAK. Because coined marks are unique and distinctive, they are generally easier to register and enforce. They also provide businesses with the broadest scope of trademark protection. For companies looking to build a scalable national brand, coined marks are often an excellent option.
2. Arbitrary Marks: Strong and Distinctive
Arbitrary trademarks use common words in a completely unrelated context. Arbitrary marks include marks like SATURN for automobiles, APPLE for computers and MONT BLANC for writing instruments. While the words themselves already exist, they have no logical connection to the goods or services being offered. As a result, arbitrary marks are also considered very strong trademarks and receive broad legal protection.
3. Suggestive Marks: Creative and Protectable
Suggestive trademarks hint at the nature or characteristics of a product or service without directly describing it. Consumers must use some imagination or thought to connect the trademark to the underlying goods or services. More well-known suggestive marks include MICROSOFT, NETFLIX and AIRBUS. Suggestive marks often strike a balance between marketing effectiveness and legal strength. They communicate something about the brand while still maintaining a relatively broad scope of trademark protection.
4. Descriptive Marks: Difficult to Protect
Descriptive trademarks directly describe the goods, services, features, qualities, or functions associated with a business. For instance, CAR WASH EXPRESS or PREMIUM ROOFING. Although descriptive names may appear attractive from a marketing standpoint because they immediately tell consumers what the business does, they are generally weak trademarks. Descriptive marks are difficult to register and enforce because competitors must remain free to use descriptive language in their own marketing.
In many cases, a descriptive trademark cannot obtain federal registration unless the owner can prove the mark has acquired “secondary meaning,” meaning consumers specifically associate the term with a single business source. Examples of descriptive marks that eventually acquired distinctiveness include HOME DEPOT and BEST BUY. However, building this level of recognition often requires years of extensive use and significant advertising investment.
5. Generic Terms Cannot Function as Trademarks
Generic terms are the common names for a class of products or services and can never function as trademarks. These include terms like SOFTWARE, HEALTHCARE, BURGERS, or BOATS. Because these words merely identify a category of goods or services, they are not eligible for trademark protection or registration with the USPTO.
How a Trademark Attorney Can Help
Selecting a trademark involves far more than simply choosing a business name that sounds appealing. An experienced trademark attorney can help you evaluate the strength and registrability of a proposed trademark as well as understand any potential risks associated with the mark. Working with counsel early in the branding process can save businesses substantial time and expense later.
Protect Your Brand from the Start
Our firm helps startups, entrepreneurs, and growing companies navigate trademark selection, clearance searches, federal registration, and brand enforcement strategies. Whether you are launching a new business, expanding into new markets, or building a company designed to scale, strategic trademark protection can help secure the value of your brand from day one.