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Strong versus weak trademarks: Why it's vital to understand both

Once a group of entrepreneurs is ready to bring their product or service to market, the real work begins.

In addition to making meaningful business decisions, including the type of business structure to establish and how much commercial space to rent, they will also have to make decisions about branding or, more specifically, a trademark.

While the idea of devising a trademark for goods or services may sound like a relatively simple and altogether fun creative endeavor, there are important issues entrepreneurs need to consider.

Is the trademark "strong?"

To recap, a trademark is the word, phrase, design, or symbol-or any combination of these-used to both identify and distinguish the goods of one party from those of another. A service mark accomplishes the exact same feat, except that it applies to services.

Collectively, they are both referred to as trademarks, serving as notice to consumers that particular goods or services originate from a single and unique source.

There are two very important considerations that entrepreneurs must keep in mind when selecting a trademark. First, whether the mark is capable of being registered with the U.S. Patent and Trademark Office and, second, whether the mark is legally protectable or "strong."

Understanding the second consideration

Simply put, the stronger a trademark is, the easier it is for businesses to go through the courts to prevent third parties from using comparable trademarks for their goods or services. Conversely, the weaker a trademark is, the harder it will be for businesses to supervise and safeguard against potential trademark infringement.

This naturally begs the question: What constitutes a strong trademark and what constitutes a weak trademark? To that end, there are four categories into which trademarks can be divided with placement determinative of enforceability (i.e. strength).

1. Fanciful or arbitrary marks

A fanciful or arbitrary mark is considered incredibly strong given its distinctive nature, with the former encompassing those words or phrases that are entirely invented and have no defined meaning, and the latter encompassing those words or phrases whose defined meaning has no correlation to the goods or services.

A person need not look any further than the athletic shoes on their feet for an example of a fanciful or arbitrary mark.

2. Suggestive marks

A suggestive mark is also considered to be strong, but perhaps one step below a fanciful or arbitrary mark. As implied by the name, it insinuates or intimates, yet falls short of actually describing, the connection to or qualities of a good or service.

Fast N' Ready" for instant bake cookies is an example.

3. Descriptive marks

A descriptive mark is considered to be weak owing to its use of words or phrases that really do little more than describe the good or service. By way of example, consider something like "World's Best Corndogs."

It's worth noting that while a trademark identified by the USPTO as "merely descriptive" will not be registered and, by extension, be legally protectable, this can change in the event it acquires distinctiveness. This essentially means that it becomes increasingly unique thanks to extensive use (i.e., five years or longer) in commerce.

4. Generic marks

A generic mark is always weak, meaning it cannot be legally protected against use by third parties under any circumstances. A proposed trademark would fall under this category if it essentially uses everyday names for goods or services, such as milk for a dairy-related beverage or bike for a bike store.

Such an illustration regarding these types shows that the process can prove to be far more complicated than most entrepreneurs envision. An experienced legal professional should be consulted in order to provide the necessary guidance regarding trademarks pertaining to individual situations.

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