What is an Appropriate and Strong Trademark for my Product or Service?

The choice of an appropriate and strong name for a product or service is mostly a business decision, but legal consultation can assist in the process to make sure you choose a name that has a strong inherent strength. This can help protect you against challenges from competitors in disputes regarding the use of your marks.

The strength of a mark depends on the type of mark you chose (inherent strength) and the amount of advertising you do to achieve consumer recognition of your mark (sometimes called secondary meaning with respect to marks that do no have high inherent strength).

Inherent Strength of the Trademark

Different types of names for your proposed mark have different inherent strengths. The following two types of names are relatively stronger than those discussed below:

Arbitrary or fanciful:  This category consists of names that are made up by you and are  unique to your company and product.  Prior to you using the name, the name has no known meaning to consumers in connection with your line of commerce. For example, the well-known trademark XEROX® is arbitrary.                                      Likewise, the well-known name APPLE® is fanciful in connection with its use in the computer industry.

Suggestive:  This category consists of names that may not have a direct, known meaning by consumers, but once a connection is made between the name and the product, the connection may be more obvious. For example, the mark ACCURIDE® may have no readily apparent meaning, but its connotation takes on greater significance when the connection is made with hardware for furniture drawers.

Some names may not considered trademark until a connection is actually made between the use of the name in the context of the line of commerce:

Descriptive: This category can be a mark only after the mark obtains “secondary meaning” in the market place, which means consumers have made a connection between the name and the product or service.   An example of this would be the name REDS for sunglasses. This name may be the color of the sunglasses or the lenses, and if it is, then the name may be descriptive of the nature of the product. A name that is merely descriptive of the product or service does not gain market power until consumers begin to associate the name exclusively with the product or service. Surnames used for products or services are also treated similarly to descriptive marks.

Finally, some names have no trademark connotation that is or can be made. These are generic marks:

Generic: This category of marks describes the whole line of commerce, and one user of the name cannot use a generic name exclusively, and therefore these names cannot be trademarks. For example, a                  manufacturer of table sale could not try to exclusively use the name SALT as a protectable trademark.

Advertising Strength of the Trademark – Secondary Meaning

In addition to the inherent strength of the selected mark based on the unique name chosen, or the distinctive design selected, trademarks also have strength based on how well they are known in the line of commerce, meaning how closely consumers associate the name with the source of the product or service.

This type of strength is called advertising strength, or secondary meaning. If consumers recognize a strong association between the descriptive name and the source of the product, the mark will be stronger. In fact, if the mark is entirely descriptive, it can only be considered a valid trademark if the consuming public does not think of the mark as descriptive at all, but as the name of a product or service. On the other hand, if the public associates the name not only with the source of the product, but with other products, places or things at the same time, the advertising strength of the mark is weaker.

Advertising strength is most important with respect to marks that are not inherently distinctive in nature, and which fall into the category of  “descriptive” marks. Advertising strength is important with respect to marks that are not identical to competing marks, but which may be similar enough to cause consumer confusion in the line of commerce for the respective products.

Overall Strength of a Mark

Overall strength of a mark is important in trademark infringement disputes.  If a mark is inherently distinctive and unique because it is arbitrary or fanciful, the mark is strong and can more easily be protected in trademark disputes.

Marks that are not inherently distinctive have a relative strength to other marks based on an analysis and comparison of the the inherent strength of the mark and the advertising strength (i.e., secondary meaning) of the mark, as compared to the competing mark.

Choosing a strong mark will increase the likelihood of winning disputes with competitors in trademark infringement claims.