Guarding Your Brand's Identity: Trademark Protection 101
Trademark protection is a powerful device that differentiates your products in the market and provides an exclusive right to use them. Trademark protection is based on a “strength” classification system. We'll discuss why a strong trademark is crucial for businesses, explaining how evaluating its strength can help ensure product recognition from competitors – giving you peace of mind now and long-term protection into the future.
TLDR: In short, names coined, fanciful, or suggestive are sufficiently distinctive to function as trademarks. Examples include, respectively, Exxon and Apple computers. Nondistinctive marks are descriptive, geographic, laudatory, or include personal names. Nondistinctive marks may function as a trademark only if it has obtained secondary meaning. Generic names will never be granted trademark protection.
1. Why is a strong trademark important?
A trademark that stands out is essential for a business to achieve recognition and protection from unauthorized use. “Strong” trademarks are distinctive enough to identify the owner as the provider of a specific product or service with certainty. Trademarks that are not distinctive are considered "weak" and cannot be registered or protected unless the trademark owner creates consumer awareness. A weak mark leaves ambiguity or confusion in identifying a product's or service's owner to the consumer. Thus creating an original design serves both functional and legal benefits by clarifying who owns which product/service while increasing the chances of successful registration!
2. How is the strength of a trademark’s distinction determined?
The strength of a mark is gauged by its placement on the spectrum of distinctiveness known as the hierarchy of marks. The five categories, which range from strongest to weakest, are: 1) coined, 2) fanciful or arbitrary, 3) suggestive, 4) descriptive, and 5) generic marks.
Distinctive Marks
Coined Marks
These are words you will not find in the dictionary: they have been created solely for functioning as a trademark. They have no other meaning than acting as a trademark. Others cannot use coined marks in commercial contexts (related or unrelated products or services). Special treatment is afforded to coined marks because of their uniqueness.Examples: Amtrak, Exxon, and Tylenol
Fanciful or Arbitrary Marks
These names have an ordinary meaning but are utilized in a way irrelevant to the goods or services it identifies. These marks are distinctive and legally strong.
Examples: Apple computers, GoDaddy Internet services, and Penguin books.
Suggestive Marks
A suggestive mark uses ordinary words cleverly to hint at the nature of a product or service or an attribute to it without explicitly describing the product or service. Suggestive marks are considered distinctive and, therefore, legally strong. This is because they indirectly associate favorable qualities with specific goods and services creatively.
Examples: Accuride tires, Dropbox for data storage services, and Jaguar car
Nondistinctive (Ordinary) Marks
Descriptive Marks
Words describing a product or its ingredient, quality, characteristic, function, feature, purpose, or use. An example of a descriptive mark would be “Crispy Chips.” A descriptive mark may not act as a trademark unless a sufficient period has passed since the date of first use. The primary meaning that is descriptive of the product must also identify the owner as the sole source of that product.
Examples: “Self-Help Center” for a consulting service, “Pretty Nails” for a manicurist, “Midtown Auto” to describe the geographic area the service is in, and personal names.
Generic Marks
Words the common public understands and uses about an item or service. These can never be registered by a single party as the owner, indicating a single source of the product or service.
Examples: baby oil, lite beer, shredded wheat.
Conclusion
In the ever-evolving world of intellectual property, trademark attorneys stand as the vigilant gatekeepers of your unique brand identity. Our trademark attorneys help protect what makes your business distinct. From conducting comprehensive searches to ensure your trademark isn't infringing upon existing ones, to guiding you through the complex registration process, and enforcing your rights against unauthorized use, we make sure your brand's integrity stays uncompromised. Our commitment goes beyond legal expertise; we act as your strategic partners, understanding your business goals and aligning them with your IP strategy. With us, you can focus on building your brand, while we focus on protecting it.
Please contact Ed White Law if you have questions about securing or protecting your trademarks.