Is Your Business Name Strong Enough to Qualify for Federal Trademark Protection?

Do you know if your business name is strong enough to qualify for federal trademark protection?  If you don’t know, it’s important for you to find out because possessing a federally registered trademark with the United States Patent and Trademark Office (USPTO) is the best way to protect your brand in all 50 states.  This article focuses on the factors included in determining whether your mark is strong enough to qualify for federal trademark protection.

The strength of a mark determines the scope of legal protection afforded to it.

Mark strength is the measure of the distinctiveness of a trademark.  The nature of a mark in terms of its relative strength or weakness will have a direct impact on its performance in the market and the scope of legal protection afforded to it.  If a mark is highly distinctive, it is considered a strong mark and is eligible for broad trademark protection.  Strong marks are registerable on the Principal Trademark Register, which affords full trademark protection to the marks registered on it.  If, however, a mark is not distinctive, it is considered a weak mark that does not qualify for full trademark protection.  Nevertheless, certain weak marks, such as descriptive marks, may qualify for partial trademark protection and are registerable on the Supplemental Trademark Register.  To learn more about the distinction between the Principal Register and the Supplemental Register, click here.

There are five different types of marks with various degrees of strength:

1. Generic: A generic word is not afforded any trademark protection.  A generic word is the common name for a product or service in question.  For example, a “heel” is a generic word for a type of shoe.  Generic words cannot be used as trademarks in relation to the products or services they signify because the public uses these words as common terms and will not associate these words with a particular brand or company.
2. Descriptive: Certain descriptive marks may qualify for partial trademark protection on the Supplemental Register, but descriptive marks are not typically eligible for full trademark protection on the Principal Register.  A descriptive mark is a word or group of words that merely describe a product or service by its attributes.  For example, HOT AND SPICY in relation to salsa dip is a descriptive mark.  This type of mark is not typically protectable as a trademark on the Principal Register.  The only exception to this rule is when the mark that is merely descriptive later acquires secondary meaning through exclusive advertising and use as a trademark for a sufficient period of time.  Recently, the U.S. Supreme Court ruled that “Booking.com” could be registered as a federal trademark on the Principal Register.  This decision opened the door for more descriptive marks to be registrable on the Principal Register in the future.  Still, in order to be registered on the Principal Register, the public must perceive the descriptive mark to be a source identifier, rather than simply a word used to describe or identify a product or service group.
3. Suggestive: A suggestive mark is eligible for full trademark protection on the Principal Register.  A suggestive mark is a mark that hints at or suggests the nature of a product or service without actually describing the product or service.  An example of this type of mark is GREYHOUND for the bus service company because the word “greyhound” suggests that the bus service is as fast as a greyhound.
4. Arbitrary: An arbitrary mark is eligible for full trademark protection on the Principal Register.  An arbitrary mark is a mark that is a word or group of words that have a common meaning in language, however, that meaning is not related to the goods or services for which the mark is used.  Some famous examples of arbitrary marks include APPLE for computers and AMAZON for internet delivery services.  Arbitrary marks are afforded a broad scope of protection against third-party use.
5. Fanciful: A fanciful mark is eligible for full trademark protection on the Principal Register.  A fanciful mark is the strongest type of mark because it is inherently distinctive.  This type of mark is a combination of letters or symbols that have no meaning and have been invented solely for the purpose of serving as a trademark.  Some famous examples of fanciful marks include PEPSI, KODAK, and GOOGLE.  Brands that use fanciful marks enjoy the broadest scope of protection against third-party use.

If your business name is strong enough to qualify for federal trademark protection, the next step is to determine if any other business already has federal priority rights to that name.  Because there are several factors to consider when determining whether a mark will qualify for federal trademark protection, many brand owners find it worthwhile to consult with an experienced trademark attorney who can provide tailored and specific advice.

If you would like to schedule an appointment with the trademark attorneys at Bruno Law, call us at 610-258-4003 or fill out the Contact form.