By: Scott Brenner

Effective trademarks exclusively identify the source of the goods or services. The power of a trademark to distinguish the source of goods or services is its strength. A highly distinctive trademark is “strong” because it immediately identifies the source of the goods or services. A barely distinctive trademark is “weak”—customers may not even recognize a weak trademark as a trademark. The stronger a trademark, the easier it is for customers to recognize the trademark and distinguish you from your competitors.

There are two dimension of trademark strength—commercial and conceptual strength (or inherent strength). Commercial strength hinges on whether consumers associate the mark with a specific source. Conceptual strength turns on the linguistic uniqueness of the mark. The strength of a trademark is determined by weighing both commercial and conceptual strength.

Commercial Strength

Commercial strength is the actual customers recognition of a trademark. The more widely the mark is recognized, the greater its commercial strength. Sales, advertising, length of use, media coverage, and use by third parties are helpful means of estimating a trademarks' commercial strength. Trademark owners typically must earn commercial strength by spending time and money promoting the trademark or winning unsolicited media coverage.

The conceptual strength of a trademark is measured on a continuum from generic to fanciful. The conceptual strength can be evaluated before the trademark is used.

Generic Terms

Generic terms are never entitled to any trademark protection. Generic names include “hamburger” for meat sandwiches, “cars” for vehicles, and “plumbing” for services to deliver water in a building. These are the names of the goods and services. They do not identify or distinguish the source of the goods and services. Everyone is free to use generic terms to identify their goods and services.

Using a generic term as your “trademark” puts you at a competitive disadvantage you can never overcome. You will never be able to prevent others from using the generic term to promote their competing products. The effort and money you dedicate to promoting a generic term will always be diluted and at risk. It will be diluted because when you persuade customers to buy your generic-branded goods or services, your potential customers will not be able to distinguish your generic brand good and services from your competitor's.

Descriptive Terms

Descriptive terms describe a characteristic, feature, or benefit of the goods or services. For example, “quick drying” for towels, “affordable” for rental cars, or “light and creamy” for ice cream. Descriptive terms can become trademarks, but they must first acquire distinctiveness. Distinctiveness is acquired after extended, exclusive use and substantial promotion. A familiar example of a descriptive trademark that has acquired distinctiveness is McDonald's QUARTER POUNDER. Quarter pounder merely describes a ¼ pound hamburger. But because McDonald's has been using it since 1971 and has spent millions of dollars promoting the QUARTER POUNDER trademark, it has acquired distinctiveness as a trademark.

Using a descriptive term to identify you as the source of your goods or services may effectively communicate the nature of your goods or services. And it may be helpful for search engine marketing. However, descriptive terms cannot distinguish you as the source of your goods and services until they acquire distinctiveness. But they may never acquire distinctiveness, especially if competitors use the descriptive term.

Suggestive Marks

Suggestive trademarks are inherently distinctive. They suggest some characteristic or feature of the goods. They do not immediately describe a feature or benefit of the goods or services.  Examples include CHICKEN OF THE SEA, TESLA, MICROSOFT, COPPERTONE, and NETFLIX. Suggestive trademarks are in the middle of the conceptual strength continuum. TESLA has become strong because of the amount of money spent marketing the trademark and the publicity it has enjoyed.

As the name suggests, arbitrary trademarks are trademarks that have no relationship to the goods they promote. Arbitrary trademarks are inherently strong, providing the owner a great deal of protection against competitors. Examples include APPLE for phones, PENGUIN for books, and SHELL for gasoline. Anyone attempting to use apple as a trademark for phones or computers will face a steep uphill battle. But Apple cannot prevent someone from using apple to describe the fruit or apple in a trademark for a product unrelated to computers or phones.

Fanciful Trademarks

Fanciful trademarks, sometimes called coined terms, are the strongest trademarks on the conceptual axis. These are made-up words that have no meaning or significance other than as a trademark. Examples include XEROX, STARBUCKS, and GOOGLE. The owner of a fanciful trademark has an exceptionally broad right to prevent others from using the fanciful trademark. Essentially no one can use GOOGLE as a trademark for any goods or services potentially related to Google's services.

This chart shows the relative strength of trademarks as well as the descriptive term “quick dry” and the generic term “plumbing.” This chart is only for illustrative purposes.

Suggestive, arbitrary, and fanciful trademarks are conceptually strong. They make it easier for customers to remember and distinguish your goods and services from those of your competitors. And they make it easier for you to prevent competitors from using similar trademarks. Using a conceptually strong trademark puts you on a firm footing to enforce your trademark right and build the commercial strength of your trademark.

If you have further questions about trademark strength, selecting a trademark, or registering a trademark, please call us at 303-665-9845 or contact us through our website.