How Strong Is Your Trademark?

Without exception, small business owners need trademarks to build up their brand and reputation in the marketplace. The Browne Firm has published numerous blogs that cover the importance of trademarks for entrepreneurs. To recap, though, a trademark is “a word, phrase, symbol, and/or design,” as described by the U.S. Patent and Trademark Office (USPTO) that helps consumers identify the source of products or services.

Any particular trademark falls somewhere on the spectrum of distinctiveness. There are five points along this spectrum; the point that applies to your trademark has a large part in determining whether your trademark is available for federal protection. It can also give you a glimpse into the likelihood of success for your federal application. The spectrum of distinctiveness for trademarks is described below.

1. Generic marks. This is the weakest type of trademark. In fact, words or devices that can be described as “generic” cannot actually function as a trademark or service mark. Generic devices simply name the product or service in question. For example, you will not be able to trademark the phrase standing desk or cell phone. Some brand names that were once stronger, like escalator or aspirin,  have become generic due to their widespread use and lack of protection in the marketplace.

2. Descriptive marks. Almost as weak as generic marks are descriptive marks. Like generic marks, descriptive marks are not eligible for federal trademark protection. Descriptive marks are devices that describe the product in question instead of merely providing a common name for the product. For example, a descriptive mark for a cell phone company could be portable wireless. While that phrase is a small step above cell phone, it is not distinctive enough for the USPTO. However, descriptive marks that have achieved secondary meaning, like American Airlines, can get federal protection. Most consumers know that American Airlines is a specific airline and not just a phrase referring to airlines headquartered in the U.S.

3. Suggestive marks. Suggestive marks are the weakest marks on the spectrum of distinctiveness that can actually get protection from the USPTO. These marks describe some aspect of a product or service without simply describing the main feature. Take Coppertone, for instance. The name alone suggests that using its products will darken your tan and achieve a “copper” tone for your skin. A suggestive mark can be the best of both worlds for entrepreneurs, as it can give customers information about your products or services while not being generic enough to miss out on federal protection.

4. Arbitrary marks. Some of the world’s most recognizable brands can be described as arbitrary. Arbitrary marks are common words that have different meanings when attached to a brand. An apple, obviously, is a fruit, but almost everyone understands the company Apple is a technology behemoth. Well, everyone except for the affable, loyal, and lovable Forrest Gump, who was just happy to make a fortune from his investments in “some kind of fruit company.”

5. Fanciful marks. The strongest trademarks are fanciful trademarks. These marks are words or phrases that did not exist prior to attachment to a brand. Prominent fanciful trademarks include Google and ExxonMobil and brands that exist within those marks. It often takes a substantial amount of advertising and marketing to cultivate a fanciful trademark.

If you have a fanciful mark for your brand, great! A word of caution, though: without aggressive and continual protection of the mark, it could become generic and lose federal protection. This is what occurred to escalator, which was once a trademark for Charles Seeberger of the Otis Elevator Company. Over time, the word escalator became generic and is now no longer capitalized or connected with a particular brand in the minds of consumers.

The Browne Firm in Westchester County Can Help Protect Your Brand

Whether you realize it or not, your startup already has assets that are quite valuable — trademarks. Without a smart and precise strategy to protect your trademarks, though, your brand will never reach the heights it could otherwise reach with federal protection. A cornerstone of The Browne Firm is helping entrepreneurs protect their trademarks and secure their brand for years to come.

Set up a consultation with a Westchester County trademark lawyer here or by calling us at 914-685-6935.