Selecting a Strong Trademark
Not all trademarks are created equal. Some marks are inherently strong, and some are usefully descriptive but weak. Whether a mark is inherently strong depends on where the mark falls on the spectrum of distinctiveness. Third party use of a mark (or similar versions of the mark) will also affect the strength of a mark and will greatly affect a company’s ability to use and obtain rights in a given mark. Picking a mark that is marketable, strong, and available for registration is becoming an especially daunting task in a crowded market of alcohol producers.
|
TYPE
|
DEFINITION
|
EXAMPLE
|
NOTE
|
|---|---|---|---|
|
GENERIC
|
A mark that is synonymous with the described goods/services | BEER for “beer” | A fanciful or arbitrary mark can become generic if the goods/services come to be the common word for the underlying goods/services. Victims of ‘genericide’ include cellophane, laundromat, thermos, and escalator. |
|
DESCRIPTIVE
|
A mark that directly describes an aspect of the goods/ services. | BARREL for “whiskey | Common surnames (like “Smith”), merely geographically terms (like “Chicago”), and laudatory terms (like “Great”) are all considered to be descriptive terms. Some descriptive terms may be protectable as trademarks if the applicant can show that the public has come to associate the mark with the applicant’s goods/services (i.e., show secondary meaning) |
|
SUGGESTIVE
|
A mark that directly describes an aspect of the goods/ services. | ANGEL’S SHARE® for “distilled spirits” | The line between suggestiveness and descriptiveness often determines whether a mark is registrable |
|
ARBITRARY
|
A known word or thing that has no direct or indirect relationship with the described goods/services | MAKER’S MARK® for “whiskey” | Uncommon surnames and geographic areas are likely to be considered arbitrary |
|
FANCIFUL
|
A word or thing that has no known meaning apart from its use as a mark | PEPSI® for “soft drinks” | Fanciful marks are the most common victims of ‘genericide’ |
Marks that are arbitrary or fanciful are inherently stronger trademarks than marks that are generic or descriptive. That said, descriptive marks can be useful to convey information to the consumer about the goods/services. As in all things, choosing the right mark for a business will require weighing the positives of using an inherently strong mark against, among other things, the positives of using a mark that conveys such information to consumers.
