Trademark Spectrum of Strength

Trademark Spectrum of Strength

Choose the Best Name for your Brand – The Trademark Spectrum of Strength

Choosing a name for your business or brand is a huge decision. Of course, you will want to take branding, marketing, or SEO strategies into consideration, and begin by identifying your target audience. However, do not overlook the importance of choosing a name entitled to legal protection. Skipping this step can cause major problems down the road into your business. How so, you ask?

  • Reputation damage when a different brand has a similar name
  • Forced rebrand if another company has superior rights to a similar name
  • Lack of IP assets and value needed to sell, expand, franchise or fund your business

There are a number of problems that can arise, and practically speaking- just take a look at the most successful brands out there… Nike, Apple, Google, Amazon… they are all very strong on the Trademark Spectrum.

So, just what is the Trademark Spectrum? It is essentially a range of the strength and protectability of a particular trademark, and its ability to acquire distinctiveness in the marketplace. In order of weakest to strongest, the categories are:

  • Generic
  • Descriptive
  • Suggestive
  • Arbitrary
  • Fanciful

Ideally, you will want to be somewhere between suggestive and fanciful.

Generic names are NOT entitled to trademark protection. Examples of generic names would be “The Coffee Shop” for a coffee shop, or “Quik-Print” for printing services.

Sometimes the lines are blurry between Generic and Descriptive marks, which is one of the reasons it’s better to shoot for a stronger mark to begin with. One of the ways to tell if the trademark falls into the “descriptive” category, is to consider whether is indicates an ingredient, quality, characteristic, function, feature, purpose, or use of the products and services associated with the name. If it immediately conveys information about those qualities of the goods or services, it is likely to be descriptive, whereas, if it describes the service or products themselves, it is likely to be generic.

Examples of descriptive marks include, “The Breathable Mattress” for mattresses, and “Cold and Creamy” or “Donaldson’s Grocery” when Donaldson refers to a surname.

Descriptive names can be difficult to protect, but there are some ways to do so in certain instances. First, if the mark is merely descriptive, but does not present any other issues that would bar registration, the trademark can be federally registered on the Supplemental Register, as opposed to the Principal Register which all applicants initially apply to. Additionally, Descriptive marks are capable of gaining “acquired distinctiveness” or “secondary meaning,” by prevalence in the marketplace, consumer recognition, and length of time it’s been in use. When this happens, marks that would otherwise be considered “descriptive” can now be protected on the Principal Register. Examples of brands in this situation would be “Best Buy” and “Designer Shoe Warehouse” (DSW).

Suggestive names are a nice sweet spot for many brands. Although fanciful and arbitrary names are stronger, and entitled to greater protection, they can also be more difficult to market since they do not automatically convey something about the brand or the brand’s products and services. Suggestive marks allow you to convey something to your consumer that you want them to know. It could be an outcome or result derived from your products or services, or maybe it is a combination of a descriptive term and an arbitrary or fanciful term. To be considered suggestive, the trademark must require imagination, thought, or perception to reach a conclusion about the nature of the goods and services connected with the trademark, also known as a “mental leap.”

Examples of suggestive marks are “Chicken of the Sea” for tuna, “Snowball” for spherical microphones, or “Dairy Queen” for ice cream.

Arbitrary trademarks are very strong names for brands. The most famous example is “Apple” for computers. Now we all make the association between Apple and Computers, but prior to Steve Jobs and Wozniak creating the brand, the two words were completely unrelated.

Other examples of arbitrary marks include Speck for phone cases, Snowball for microphones, Brother for printers, Drunk Elephant for Skin Care products, and Sephora for Beauty Retail Stores.

Fanciful trademarks require the most amount of imagination and the greatest marketing strategy (and usually budget). This is because these are made up words that consumers will have to train their brains to remember and will initially have no context about the products. The benefit is a completely unique brand and the greatest level of protection. A few examples include, Pepsi, Exxon, S’well, and Lululemon. With fanciful trademarks, the protection is so broad that other marks will be unable to be similar without infringing.

While trademark protection is not the only consideration when naming your brand, it is certainly imperative to consider, and very important for the long-term success of the company. DiAngelo Law can help you determine the strength of your proposed brand names, provide a thorough clearance search and risk analysis, and guide you through the trademark process to ensure you are protecting your brand as you build and grow your business.

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