Author: Ahmed Bulbulia, Pallett Valo LLP
When considering a possible trademark for your business, product or service, the strongest trademarks are highly distinctive trademarks that distinguish your business, product or service from others in the marketplace.
Strong trademarks are registerable and are easier to enforce.
A trademark is an indicator of source and may include a word, a slogan, a design, a three-dimensional shape, a moving image, a hologram, and other kinds of signs.
A business may be tempted to pick a trademark that describes a character or quality of the business, product or service. Resist that temptation because such marks are often weak marks that are difficult to register and to enforce.
Spectrum of Distinctiveness
Distinctiveness is the essence of a trademark.
When devising a trademark, keep in mind a spectrum of distinctiveness that ranges from: strong trademarks, to suggestive trademarks, and to weak trademarks.
a) “Coined” Trademarks
The strongest trademarks are those that are made-up terms. These trademarks have no dictionary definition and do not suggest the business, goods, or services associated with the trademark. Examples include:
- EXXON for petroleum products;
- LULULEMON for clothing;
b) Arbitrary Terms
Arbitrary trademarks are also strong trademarks. These trademarks are comprised of words that have dictionary meanings, but these words have no connection whatsoever to the business, goods, services associated with the trademark. Examples include:
• APPLE for computers;
• WINNERS for retail clothing stores;
Suggestive trademarks are moderate in strength. When viewed in its totality, this kind of trademark is at most suggestive (but not descriptive) of a character or quality of the business, goods, or services associated with the trademark. Examples include:
- MICROSOFT for computer software;
- NETFLIX for streaming services;
Weak Trademarks and Generic Marks
Weak trademarks describe a character or quality of the goods/services associated with the trademark. Such trademarks may or may not be registrable.
However, terms that are clearly descriptive cannot be registered as a trademark. Examples of descriptive terms that were held to be unregistrable include:
- FLORIDA CITRUS PUNCH for citrus drink;
- TEACHERS for pension fund services for teachers;
Laudatory terms that praise the superiority of a business, good or service are considered to clearly describe the character or quality of the business, good or service. Laudatory terms cannot be registered. Examples include: SUPERIOR, EXCELLENT, and SUPER.
Generic terms go beyond descriptive trademarks, and name the product or service itself. For example, a manufacturer of chairs cannot trademark the word CHAIR. Generic terms cannot act as trademarks because such terms should be available for all to use in the relevant art or industry.
Contact Ahmed Bulbulia at Pallett Valo LLP to guide you through the trademark process in order to secure and protect your trademarks. Ahmed can be reached at [email protected] or 905-247-4894.