You know that you need a trademark for your business — but did you know that not all trademarks are created (or defended) equally? When you submit an application to the United States Patent and Trademark Office, the strength of your desired mark is a major consideration. It’s not enough simply to choose a name that no one else has chosen yet. Weaker trademarks run the risk of not being approved by the USPTO, and those that are approved may be in a precarious position when it comes to defense.
What constitutes a legally strong trademark, and how can your business benefit from one? Let’s take a look.
The main characteristic of a trademark’s strength is how closely it can be associated with the product or service that you’re offering. The rule of thumb is that the less your name has to do with your offering, the stronger your trademark is. The USPTO classifies trademark strength in these five categories, listed strongest to weakest:
Fanciful terms: These are names or phrases that you’ve completely made up. It’s a word that hasn’t existed before. Fanciful terms are considered the strongest trademarks by the USPTO — these newly conjured marks have no preexisting association in the mind of the public and so are the least likely to create any confusion or overlap with another mark.
Arbitrary terms: Arbitrary terms are existing words or phrases that are completely unrelated to what your company does. The USPTO considers these trademarks the second strongest — you’re creating a new connotation between your product and the name you’ve chosen, and so the risk of confusion with another mark is extremely low.
Suggestive terms: These marks aren’t completely unrelated to your product or service, but the key is that they aren’t directly descriptive of it, either. A suggestive term might imply something about your product, or what you’d like your customers to think about your product. The connection, though, needs to be subtle enough as to be nearly subconscious, otherwise your mark may slide down the scale and be considered “descriptive.”
Descriptive terms: A descriptive mark does just what it says — it’s a word or term that specifically describes an aspect of your product or service, or refers directly to its intended results. Since these words and phrases are inherently connected to what you offer, there would be a much higher risk of confusion if the USPTO gave broad protection to such marks. For that reason, they are difficult to successfully register and protect.
Generic terms: The least distinctive naming convention, a generic term simply tells what your product or service is or does. “Landscaping Company,” for instance, would be a generic name for that type of business. These types of names cannot be trademarked — they have no unique or differentiating factors.
Creating or selecting a legally strong trademark based upon the criteria above provides several benefits. Let’s talk a bit more about what they are:
An easier road to approval. Completing and submitting a trademark application is no small undertaking, and the time involved from the beginning to the end of the process can be significant. If you’re submitting an application for a weaker trademark, you may have to expend extra time, money and resources justifying your right to the mark to the USPTO — or you may be denied outright, in which case you’ll have to start from square one.
Greater legal security. One of the most common legal challenges against weak trademarks is that they aren’t distinctive enough to create an association with your company and your company alone, and thus are more likely to create confusion in the marketplace. Successful challenges like these can result in cancellation of your trademark, or a significant narrowing of your protections to the point where your trademark is no longer useful to you. You can avoid those challenges and the threat that they represent to your brand and your company by choosing a stronger trademark: a fanciful, arbitrary or suggestive name.
Those are the direct benefits of a strong trademark. As a representation of your brand, a strong trademark provides other indirect benefits, such as greater protection of your revenue and profitability. When you consider those long-term implications, there’s no doubt as to the importance of a strong, well-chosen trademark.
The principal of Gerben Law Firm, PLLC; Josh Gerben is a trademark attorney and expert on trademark law and trademark related services. His law firm regularly provides individuals and businesses with assistance protecting assets via trademark search, application, registration, and monitoring processes. Visit the blog to learn more.