TRADEMARK LAW 101 Part 4- TM BASICS FOR BUSINESS OWNERS



What makes a strong trademark?


While there are lots of factors to consider from the creative side of your branding strategy, a fundamental concern is always whether the brand is registrable and therefore protected by the law. For a trademark to be “strong” you must be able to protect your trademark rights in that brand through registration. Otherwise, your competitors will be free to use similar branding and ride on the coattails of the goodwill created through your brand development. A strong brand creates greater equity in your business and its intangible assets.


To be registrable, your trademark must be distinctive, meaning that the mark must be capable of distinguishing your goods or services from the goods or services of your competitors.

When it comes to trademarks, distinctiveness is considered to be a spectrum from the most distinctive of “fanciful” (being the strongest types of marks) to the least distinctive being “generic” (which is the weakest type of mark and not registrable).


A fanciful mark is essentially a made-up word or term, such as KODAK and GOOGLE. These marks do not describe or even suggest the goods or services associated with them, and therefore clearly distinguish the brand from competitors’ goods and services.


The next strongest on the spectrum of distinctiveness are “arbitrary” marks. These trademarks are words or terms commonly used in everyday language, but are used in an arbitrary way with the particular goods or services such that no direct association exists between the primary meaning of the word and the goods/services. A well known example of an arbitrary brand is Apple used in association with computers.


The third strongest type of trademarks are “suggestive” marks. These trademarks suggest, but do not clearly describe, the types of goods or services associated with the brand. Microsoft for software is a well-known example of a suggestive trademark.


Weaker (and unregistrable) trademarks are “descriptive” marks, and “generic” marks. These marks either clearly describe the nature of the goods or services ( “Cold Beer”) or the actual name of the goods/services (“Beer”). Because such a mark describes the goods, this makes it difficult or impossible to distinguish the goods or services from competitors’. These marks will rarely be registrable without some other factor such as acquired distinctiveness. Therefore, they are considered weak because there is no way to protect the brand from use by others.


Distinctiveness is only one factor in whether a trademark is registrable, however it is the starting point in any branding strategy to ensure that the brand will be able to be protected.


A key part of your branding strategy should include a review with a trademark lawyer in the early stages of your branding plan to help you determine the distinctiveness and registrability of your trademark before you spend time and money on a brand that may not be capable of being protected. Strong brand equity requires planning in the early stages of your business and before launching each new product or service.


For more information on trademarks and branding strategy please contact us to schedule your consultation.


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