Trademark Strength/Strong Trademarks

Being able to associate a product or service with the symbol of U.S. Federal Trademark Registration -®- is a strong business tool. Purchasing decisions are continually influenced by trademarks by distinguishing products from one another and indicating a level of authenticity and quality about products and services. The strength of a trademark and the strong association that it creates in the minds of consumers is very valuable property.

 When a merchant or manufacturer chooses a trademark that is inherently weak, that trademark owner will not enjoy the wide latitude of protection afforded the owners of strong trademarks.

Commercial strength, shown by the level of exclusive use by  a particular owner, is also a measure of strength. The commercial strength of a trademark is analyzed for purposes of likelihood of confusion under the sixth du Pont factor ((6) The number and nature of similar marks in use on similar goods.). Evidence of extensive registration and use by others of a term on the same or very similar goods can be “powerful” evidence of weakness. Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015); Juice Generation, 115 USPQ2d at 1674.  The commercial strength of mark can be undermined by third party use. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1693 (Fed. Cir. 2005).

Unique, Strong Trademarks are good tools for business. The International Trademark Association (INTA) in their Top Ten Reasons Why You Should Care About Trademarks calls a Trademark the Most Efficient Commercial Tool Ever Devised. A strong trademark identifies a UNIQUE source for the product or service by not using terms that others have the right to use (like descriptive terms or common terms). A UNIQUE trademark gives the owner the right to exclude others from using it! (Unlike descriptive words that anyone can use.)

BUILDING COMMERCIAL STRENGTH

Acquired Distinctiveness Is A Threshold Test for Trademark Strength and Protection for Descriptive Marks That Are Not Inherently Distinctive

The inquiry into whether a mark that is not inherently distinctive has acquired distinctiveness is a threshold issue of trademark validity. "Acquired distinctiveness" or "`secondary meaning' is merely a label given that quantum of `strength' sufficient to activate some terms into life as a trademark.'" McCarthy On Trademarks And Unfair Competition § 11:82 (4th ed. 2010); see also McCarthy On Trademarks And Unfair Competition § 15:25. Once acquired distinctiveness is established, the scope of protection, or strength, accorded a mark is commensurate with the degree of consumer association that is proven. Id.; AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 204 USPQ 808, 814 n. 12 (9th Cir. 1979); see also Jiffy, Inc. v. Jordan Industries, Inc., 481 F.2d 1323, 179 USPQ 169, 170 (CCPA 1973) ("Development of association with the user as a source of the goods through continued sales and advertising of the goods may turn a `weak' mark into a strong, distinctive trademark"); Standard International Corp. v. American Sponge and Chamois Co., Inc., 394 F.2d 599, 157 USPQ 630, 631 (CCPA 1968) ("a mark which is initially a weak one may, by reason of subsequent use and promotion, acquire such distinctiveness that it can function as a significant indication of a particular producer as source of the goods with which it is used"); Hyde Park Footwear Co., Inc. v. Hampshire-Designers, Inc., 197 USPQ 639, 641 (TTAB 1977) ("The registrations alone are incompetent to establish any facts with regard to the nature or extent of opposer's use and advertising of its trademarks or any reputation they enjoy or what purchasers' reactions to them may be"); Martha White, Inc. v. American Bakeries Co., 157 USPQ 215, 217 (TTAB 1968) (opposer's registration is not evidence of the nature and extent of opposer's use and advertising of its mark and, thus, is not probative of consumer reaction to the mark no matter how long it has been registered).

In re Zurich Insurance Company Ltd. (TTAB 2010 This decision is not a precedent of the TTAB )

What cannot be a trademark under U.S. Trademark Law?

Some terms, words, designs, and other elements cannot be a trademark under U.S. Trademark Law. Not-Distinctive words, elements or designs and functional elements of a product or service (see TMEP 1202.02(a)). Not-Distinctive words or descriptive words don’t stand out as belonging to one source. Not-Distinctive words or elements or Not-Distinctive designs can only attain trademark rights through secondary meaning (otherwise known as acquired distinctiveness). Functional elements of a product or service CANNOT achieve trademark status even if they acquire distinctiveness.

Examples of not distinctive designs that are not strong trademarks are ordinary geometric shapes. Common basic shapes such as circles, ovals, triangles, diamonds, stars, and other geometric designs, when used as vehicles for the display of word or letter marks, are not regarded as source indicators for the goods to which they are applied in the absence of a showing of secondary meaning in the design alone. In re E. J. Brach & Sons, 118 USPQ 308 (CCPA 1958); and In re Haggar Co., 217 USPQ 81 (TTAB 1982). More examples of Strong/Weak Marks are below.

When a background design used for the display of a word or letter mark is sought to be registered by itself, without the word or letter mark, the design may be registered without any evidence of secondary meaning if it is distinctive or unique enough to create a commercial impression as an indication of origin separate and apart from the remainder of the mark; conversely, if it is not distinctive or unique enough to create a separate commercial impression as a trademark, it may be registered only upon proof of secondary meaning. In In re National Institute for Automotive Service Excellence, 218 USPQ 744, 745 (TTAB 1983). For a table of examples of not distinctive designs, see NotDistinctive.com.

A mark is not-distinctive or merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), if the words describe an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods and/or services.  In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987);  In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b).  A mark that describes an intended user of a product or service is also merely descriptive within the meaning of Section 2(e)(1).  Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996 (TTAB 1986); In re Camel Mfg. Co., Inc., 222 USPQ 1031 (TTAB 1984); In re Gentex Corp., 151 USPQ 435 (TTAB 1966). For examples of not-distinctive or merely descriptive refusals see MerelyDescriptive.com.

Other examples of not distinctive elements of potential trademarks are generic descriptive words that describe the type of organization seeking the mark such as INC, INCORPORATED, AGENCY, AGENCIES, CORP, CORPORATION, etc. Other generic descriptive portions of potential marks that should be disclaimed are the TLD (top level domain) or generic locator such as .COM for Internet website addresses that provides no source-identifying significance, and therefore is not entitled to appropriation in a trademark application.  To avoid a trademark office refusal on these terms, these organizational or generic locational descriptive words should be disclaimed in the trademark application. The Trademark Office may require the disclaimer of a portion of a mark that is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable. If an applicant does not comply with a disclaimer requirement, the Office may refuse registration of the entire mark.  TMEP §1213.01(b). Cases that describe the disclaimer requirements are: Dena Corp. v. Belvedere Int’l Inc., 950 F.2d 1555, 21 USPQ2d 1047 (Fed. Cir. 1991); In re Kraft, Inc., 218 USPQ 571 (TTAB 1983); In re EBS Data Processing, Inc., 212 USPQ 964 (TTAB 1981); In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977).

What is a Strong Trademark? Inherently Distinctive Marks are Strong Marks

Distinctiveness is the measure of the inherent strength of a mark. An inherently distinctive trademark [as opposed to a descriptive or generic trademark]  is a strong trademark. An inherently distinctive trademark may be registered on the USPTO Trademark Principal Register, qualifies for more protection under more federal, state and common law and is stronger for use in business to promote authenticity and for expanding product lines. The stronger the trademark the greater protection received from the courts. Nike, Inc. v. Just Did It Enterprises, 6 F.3d at 1231 (C.A.7 (Ill.), 1993) quoting Squirtco v. Seven-Up Co., 628 F.2d at 1091 (8th Cir.1980).

A trademark that is not inherently distinctive, such as a mark that is merely descriptive or generic, is hard to protect from competitive use. The law does not allow trademark owners to take descriptive dictionary words and claim them for exclusive use (including geographically descriptive marks). At best, a merely descriptive trademark may only potentially be registered on either the USPTO Federal Principal Register after 5 years of acquired distinctiveness (has achieved a secondary meaning) with the proper evidence or on the Supplemental Register. See Comparison  for the advantages of federal registration and the differences between the two registrations. Merely descriptive refusals are very common Office Actions from the USPTO. Trademark Law is not designed to protect ordinary terms as trademarks.

According to the USPTO (see merely descriptive refusals): The two major reasons for not protecting [allowing registration of] descriptive marks are:  (1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods or services; and (2) to avoid the possibility of costly infringement suits brought by the registrant.  This thus enables businesses and competitors to have the freedom to use common descriptive language when merely describing their own goods or services to the public in advertising and marketing materials.  In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (C.C.P.A. 1978); In re Colonial Stores, Inc., 394 F.2d 549, 157 USPQ 382, 383 (C.C.P.A. 1968); Armour & Co. v. Organon Inc., 245 F.2d 495, 114 USPQ 334, 337 (C.C.P.A. 1957); In re Styleclick.com Inc., 58 USPQ2d 1523, 1526-1527 (TTAB 2001); In re Styleclick.com Inc., 57 USPQ2d 1445, 1448 (TTAB 2000).

How to Make a Trademark Stronger-Secondary Meaning

Secondary meaning is when the consuming public has made a link between an alleged mark and the source of the mark. Making that link is the function of advertising and marketing the potential mark in a valid manner.

The factors considered in determining whether a descriptive mark (not inherently distinctive) has achieved secondary meaning include:

(1) whether actual purchasers of the product bearing the claimed trademark associate the trademark with the producer as evidenced by survey or direct consumer testimony;

(2) the degree and manner of advertising under the claimed trademark;

(3) the length and manner of use of the claimed trademark; and

(4) whether use of the claimed trademark has been exclusive.

Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 1358 (9th Cir.1985).

The manner of advertising and the manner of use of the claimed trademark are both essential to whether or not the trademark can achieve secondary meaning. To be a valid mark, a potential mark must actually function as a trademark:

Not everything that a party adopts and uses with the intent that it function as a trademark necessarily achieves this goal or is legally capable of doing so, and not everything that is recognized or associated with a party is necessarily a registrable trademark. As the Court of Customs and Patent Appeals observed in In re Standard Oil Co., 275 F.2d 945, 947, 125 USPQ 227, 229 (C.C.P.A. 1960):

The Trademark Act is not an act to register words but to register trademarks. Before there can be registrability, there must be a trademark (or a service mark) and, unless words have been so used, they cannot qualify for registration. Words are not registrable merely because they do not happen to be descriptive of the goods or services with which they are associated.” Trademark Manual of Examining Procedure (TMEP) 1202.

See Valid/Invalid Uses of Trademarks for more information on the ways to use a trademark in a valid manner.

The Broadest Protection  Format for Trademarks

 For the broadest protection, the standard character format should be used to register word(s), letter(s), number(s) or any combination thereof, without claim to any particular font style, size, or color, and absent any design element. Registration of a mark in the standard character format will provide broad rights, namely use in any manner of presentation.

According to a USPTO report, The USPTO Trademark Case Files Dataset: Descriptions, Lessons, and Insights, January 2013,

An applicant seeking to register a standard character mark does not claim protection for the characters in any particular font, stylization, size, or color. The owner of a standard character mark may change the mark’s display at any time because rights reside in the wording itself and not in any particular form. (See In re Viterra, 671 F.3d 1358, 1363 (Fed. Cir. 2012); 37 C.F.R. § 2.52(a).) Thus, standard character marks afford owners greater flexibility and potentially broader protection than a stylized mark or a mark with a design element. Accordingly, trademark applications or registrations with standard character drawings are the most prevalent [  ] comprising 64.2 percent of observations.

The stylized or design format, on the other hand, is appropriate if you wish to register a mark with a design element or word(s) or letter(s) having a particular stylized appearance that you wish to protect. The two types of mark formats cannot be mixed in one mark. A distinctive stylized format may also be registrable when the standard character format of the same word(s) cannot be registered on their own where the distinctiveness of the mark is obtained from the design rather than the word(s).

Types of Registrations (mark categories)

• Trademarks associated with goods or products;
• Service marks associated with the delivery of services;
• Certification marks associated by the characteristics of someone’s goods or services; and
• Collective marks indicated by membership in an organization.

Types of Marks-Usual and Unusual

Examples of Usual Types of Trademarks:

• Word Marks (standard character format);
• Design Marks (stylized format, 2- or 3-dimensional); and
• Composite of Words & Design (words in stylized format protected only as shown with a design).

Examples of Unusual Types of Trademarks:

• Shape (example: Bottle shape for wine, cola); (see more examples of three-dimensional trademarks)
• Color (example: Pink color for insulation);
• Sound (example: TiVo-The mark consists of a synthesized vibraphone-like sound playing the musical note middle B, just below middle C, and the musical note B, just above middle C simultaneously) (example: In re General Electric Broadcasting Company, Inc., 199 USPQ 560, Sound of ship’s bell clock capable of indicating source and registrable on Principal Register upon showing of acquired distinctiveness);
• Scent (example: Medicated transdermal patches where the mark is a scent mark having a minty scent by mixture of highly concentrated methyl salicylate and menthol.), (example: In re Clarke, 17 USPQ2d 1238, Scent of plumeria blossoms registrable as a mark for thread and yarn); and
• Motion (example: Flying pegasus for movie studios).

Creation of a Mark That is Distinctive Rather Than Merely Descriptive

When creating trademarks, one essential requirement in order to be registrable on the USPTO Trademark Principal Register is that the trademark is distinctive. What is a distinctive name for the purposes of obtaining a trademark from the United States Patent and Trademark Office (USPTO) is found in the Trademark Manual of Examining Procedure (TMEP) in Section 1209.01.

Distinctiveness is the opposite of descriptiveness for trademark purposes. The distinctiveness of trademarks varies along a continuum (often depending on use) from being highly distinctive (or inherently distinctive) to being merely descriptive or generic. Highly distinctive marks that are arbitrary, fanciful or suggestive are registrable on the USPTO Trademark Principal Register. Marks that are merely descriptive matter may potentially be considered to be registered on the Principal Register if they have acquired distinctiveness with Secondary Meaning (must be proven with evidence and at least 5 years of use). Generic marks (common or class names for goods or services) are not registrable as trademarks under either the Principal or Supplemental Register. Composite marks, mark that are partly descriptive or generic and partly suggestive, arbitrary or fanciful, may be registrable on the Principal Register with the descriptive or generic part disclaimed for exclusive use.

The terms are further defined in TMEP 1209.01: “Fanciful marks comprise terms that have been invented for the sole purpose of functioning as a trademark or service mark. Such marks comprise words that are either unknown in the language (e.g., PEPSI, KODAK, EXXON) or are completely out of common usage (e.g., FLIVVER).”

“Arbitrary marks comprise words that are in common linguistic use but, when used to identify particular goods or services, do not suggest or describe a significant ingredient, quality or characteristic of the goods or services (e.g., APPLE for computers; OLD CROW for whiskey).”

“A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services.”

“Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services.”

“Suggestive marks are those that, when applied to the goods or services at issue, require imagination, thought or perception to reach a conclusion as to the nature of those goods or services. Thus, a suggestive term differs from a descriptive term, which immediately tells something about the goods or services. . . .Suggestive marks, like fanciful and arbitrary marks, are registrable on the Principal Register without proof of secondary meaning. Therefore, a designation does not have to be devoid of all meaning in relation to the goods/services to be registrable.”

TMk® Email W@TMK.law best or call 1-651-500-7590   (Calls are screened for ‘trademark’ and other applicable reasons for the call) for U.S. Licensed Attorney for Trademark Searches and Applications; File or Defend an Opposition or Cancellation; File or Defend an Expungement or Reexamination of a trademark registration; Trademark Refusal; Brand Positioning

For more information from Not Just Patents, see our other pages and sites:      

USPTO TESS Trademark Product Line  TMPL.US.com

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Trademark e Search  Strong Trademark  

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Using Slogans (Taglines), Model Numbers as Trademarks

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Change Trademark or Patent Ownership    

 Opposition Proceeding    

TTAB Discovery Conference Checklist

Lack of standing is not an Affirmative Defense

Trademark Register FAQ  Definition: Clearance Search

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Amend to Supplemental Register?

Trademark Search Hack-Use the same method as USPTO   

Experience appearing before the Board (TTAB)

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How To Show Acquired Distinctiveness Under 2(f)

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3D Marks Trade Dress TTAB Extension of Time  

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Extension of Time to Oppose

 tess search  Examples of Unusual Trademarks

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Overcoming Merely Descriptive Refusal  TmkApp Checklist

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Acquired Distinctiveness Examples  2(f) or 2(f) in part

Definition: Likelihood of confusion

Merely Descriptive Trademarks  Merely Descriptive Refusals

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Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

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Pseudo Marks    How to Reply to Cease and Desist Letter

Why Hire A Private Trademark Attorney?

 Merely Descriptive Refusal   Overcome Likelihood Confusion

Common Law Rights for Domain Names

Steps in a Trademark Opposition Process   

Published for Opposition  What is Discoverable in a TTAB Proceeding Affirmative Defenses  

What is the Difference between Principal & Supplemental Register?   

What is a Family of Marks? What If Someone Files An Opposition Against My Trademark? Statutory Cause of Action (aka Standing)

Tips for responding to tm Refusal  

DIY Overcoming Merely Descriptive Refusals

TESS Trademark Trademark Registration Answers TESS database  

Trademark Searching Using TESS  Trademark Search Tips

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