Strength of A Mark

• Jurisdiction: Maryland

VI. STRENGTH OF A MARK

A. Generally

"Strength of the mark" is the degree to which the mark is distinctive of goods and services and can be identifiable with one source.⁶⁷ The legal strength of a trademark is viewed across a spectrum.⁶⁸ The strongest mark is one that is "arbitrary or fanciful,"⁶⁹ where the meaning of the words used in the mark has no relationship to the goods or services offered, such as EXXON, or APPLE (computers). Next is a "suggestive mark,"⁷⁰ which is a mark whose meaning requires a bit of extra thought or imagination to realize why the brand relates to that type of good or service, such as POLAR BEAR parkas. A "descriptive mark"⁷¹ is weaker, in that it describes a function or trait of the product which it brands and cannot serve as a mark until it acquires secondary meaning, being an association between source and product, usually obtained by documentation of use or expenditure of advertising dollars. A "generic mark"⁷² is the weakest and offers no protection because it is the actual name of the product. One word can conceivably fit in any one of these categories, depending on the goods or services with which it is used. The word "apple" is an example, APPLE as a brand for computers is arbitrary because apples have nothing to do with the product. APPLE for a brand of gifts for teachers is suggestive, because our society correlates giving an apple to a teacher. APPLE would be descriptive of a shampoo that is apple scented. Finally, APPLE is generic and has no protection as a brand name for that red fruit called "apple."

Practice Tip

In deciding how to brand a product, a lawyer and the company's marketing department have an inherent conflict. The marketing department would prefer a name that lets consumers immediately know something about the product and might be descriptive. A trademark attorney would prefer a mark that is more protectable, and might steer the client to an arbitrary, fanciful, or suggestive mark.

B. Arbitrary/Fanciful

Arbitrary and fanciful marks are inherently distinctive from adoption and are immediately capable of designating a source of goods. The strongest type of trademark is a word, phrase, or design that has nothing to do with the goods or services offered. Examples of arbitrary marks are ACCORD for vehicles and GO DADDY for domain name registrar services. Similarly, a made-up name is fanciful, and is generally strong due its having been coined. Strong marks due to their fanciful nature include HÃAGEN-DAZS for ice cream and TERCEL for vehicles. The benefit of selecting an arbitrary or fanciful mark is that it is more protectable against infringement. An additional benefit of selecting arbitrary or fanciful marks is that it is more likely to be available for use without infringing on the rights of others. Domain names that match the mark are also more likely available for fanciful marks.

C. Suggestive

A suggestive mark, like an arbitrary or fanciful mark, is inherently distinctive from adoption. A suggestive mark calls to mind the type of goods or services provided in connection with the brand but does not specifically describe the brand.⁷³ An extra step of thought is required of suggestive marks for a consumer to understand the relationship between the brand and what is offered. An example of a suggestive mark is IRON MOUNTAIN for document storage, because the thought of an iron mountain does not describe any notion of document storage but does give the consumer a sense of the safety the consumer would want.

D. Descriptive

1. Generally

Descriptive trademarks are not inherently distinctive when adopted and offer the mark's owner no initial protection against third party usage. Any word that describes the product or service or describes the nature of an attribute of a good or service is descriptive. Descriptive marks immediately provide the consumer with information about the product. While a descriptive mark may convey usage or characteristics, no one should be able to stop another from using words that merely describe the product being sold. If any one party had a monopoly on a descriptive term, others could not fairly advertise or...