What makes a strong trademark?

18 April, 2019

The US Patent and Trademark Office (USPTO) notes that it is in your best interest to select a mark that is considered “strong” in a legal or trademark sense — in other words, a mark that will most easily allow you to prevent copycats. Some marks are harder to protect than others and these are considered “weak” marks. A weak mark often simply describes the product or service (e.g. “Five Star Pizza” for a pizza restaurant), which increases the likelihood that others with similar products and services are already using it. The USPTO advises avoiding weak marks because they do not have the same legal protection as strong marks and are more difficult and expensive to protect.

On the other hand, strong marks are often:

  • UNIQUE
    You may want to search the U.S. Patent and Trademark office database and online to make sure your trademark stands out and is sufficiently different from other marks for similar products or services. Otherwise, it may be difficult to register.  For example, “Kopycat” as a trademark for file backup software is unlikely to be accepted since “Copycat” is already a registered mark for a similar business.

 

  • DISTINCT
    There are different levels of distinctness, and with trademarks, the more distinct the mark, the more protection it offers. For example, words with a known meaning that have no relationship with the product or service (e.g. Apple for computers) are less likely to already be used by others and are considered highly distinct,  while a mark that hints at the quality or nature of the products or service and requires customers’ use of imagination or perception to understand it (e.g. Netflix) is somewhat less distinct. A generic term naturally associated with or descriptive of your product or service is not distinctive at all, and is considered a weak trademark. For example, “Catnip” as a trademark for cat toys is unlikely to be accepted since it describes a common property of many cat toys.

 

  • MADE UP
    Invented words with no dictionary or other known meaning (e.g. Google) make very strong trademarks and are easy to enforce because they are distinct by nature. On the other hand, the name of a real individual, a last name, or a geographic location may not be registerable as a trademark. For example, CATFORD as a trademark for a pet-sitting service located in Catford, UK, is unlikely to be accepted since it is descriptive of an actual location.