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Strong Trademarks

Are some trademarks “stronger” than others?

A trademark can be any word, phrase, symbol, design, or a combination of these things that identifies your goods or services. It’s how customers recognize you in the marketplace and distinguish your brand from your competitors.

A trademark:

  • Identifies the source of your goods or services.

  • Provides legal protection for your brand.

  • Helps you guard against counterfeiting and fraud.

Before a trademark is registered with the USPTO on the Principal Register, the applicant must demonstrate that the trademark is distinct. All trademarks fall along a spectrum of distinctiveness:

Fanciful – An entirely invented mark that is inherently distinctive. E.g. Velcro for hook and loop fasteners

Arbitrary – A mark consisting of a known word that is thoroughly unrelated to the product or service being offered. An arbitrary mark is inherently distinctive. E.g. Nike for sportswear

Suggestive – A mark that indicates the nature, quality or characteristic of the products or services, but does not describe this characteristic; it requires “imagination” on the part of the consumer to identify. A suggestive mark may be inherently distinctive. E.g. Marvel for comics

Descriptive – A term used in connection with products or services and directly related to that meaning. This type of mark is not inherently distinctive but may acquire distinctiveness if it attains secondary meaning. E.g. for vacation services

Generic – The common name for the products or services in connection with which it is used. Generic terms are not distinctive and cannot function as trademarks. E.g. Malt Shop for an ice cream diner

Marks that are inherently distinctive are registrable on the Principal Register. Descriptive marks (for example those that require a disclaimer or that have been refused for being descriptive) are typically relegated to the Supplemental Register. However, if a mark has been used exclusively and continuously for at least five years and has come to obtain secondary meaning in the market, you can argue that it has acquired distinctiveness and it can be registered on the Principal Register.

If you file as a trademark that has acquired distinctiveness, and the Examining Attorney determines that the mark is still not distinctive, they will issue an Office Action refusing the application. It can be challenging to overcome such a refusal, but with the proper evidence and advocacy, it is possible to successfully overcome the office action and register the mark on the Principal Register. Additionally, if proving acquired distinctiveness proves futile, you may still be able to get it listed on the Supplemental Register to afford it some protection.


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