Assessing Trademark Strength

Why is Trademark Strength Important?

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. See a list of top brands at stepstoabrand.com.


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.)


Different courts use different Strength Factors (four different opinions):

  • In assessing the overall strength of a mark, we consider both its inherent strength based on the nature of the mark itself and its commercial strength, based on the marketplace recognition value of the mark. See Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006); McCarthy on Trademarks and Unfair Competition § 11:83 (4th ed. 2011) ("The first enquiry focuses on the inherent potential of the term at the time of its first use. The second evaluates the actual customer recognition value of the mark at the time registration is sought or at the time the mark is asserted in litigation to prevent another's use.") Top Tobacco, L.P. v. North Atlantic Operating Co., Inc. (TTAB 2011)
  • The strength of the mark is determined by two factors: "(1) the degree to which it is inherently distinctive [also referred to as Conceptual Strength]; and (2) the degree to which it is distinctive in the marketplace [also referred to as Commercial Strength]."  McGregor-Doniger Inc. v. Drizzle Inc., 599 F.2d 1126, 1130 (2d Cir.1979) as quoted in Major League Baseball v. Sed Non Olet Denarius, 817 F.Supp. 1103 (S.D.N.Y., 1993).
  • There are three basic measures of the strength of a trademark: the inherent nature of the mark itself, the effect of use and advertising of the mark on customer perception, and the existence of competing uses of other, similar marks. Visa Intern. Service Ass'n v. Eastern Financial Federal Credit Union, 967 F.2d 596 (C.A.9 (Cal.), 1992).
  • “The imagination test and the need test determine the strength of a mark. The imagination test asks how much imagination a consumer must use to associate a given mark with the goods or services it identifies. The product signified by an arbitrary mark requires great imagination. The more imagination required, the stronger the mark is. The need test approaches the problem from the opposite end. It asks to what extent a mark is actually needed by competitors to identify their goods or services. If the message conveyed by the mark about the goods or services is so direct and clear that competing sellers would be likely to [need to] use the term in describing or advertising their goods [or services], then this indicates the mark is descriptive. As the amount of imagination needed increases, the need of the mark to describe the product decreases.” Miss World (UK) Ltd. v. Mrs. America Pageants, Inc., 856 F.2d 1445 (C.A.9 (Cal.), 1988) (internal quotation marks and citations omitted).


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?

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 MerelyDescriptiveTrademark.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. See VerifyATrademark.com for information on Five-Step Verification and how to verify trademark strength. Businesses benefit more by a trademark with strength than a mark that is merely descriptive.


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.


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.”


Not Just Patents ® Legal Services provides a very economical package for USPTO (or international) Trademark Registration and provides domestic representation for foreign applicants. See What to Expect from a Not Just Patents ® Trademark Attorney for more information on what steps we take to protect your rights and help you develop a strong trademark.

We suggest a Not Just Patents Five-Step Verification as part of a Plan for A Successful Trademark:

To Verify a potential trademark is strong, available to use, and ready to register, the process should be more than a direct hit federal search. To maximize the commercial strength and minimize the weaknesses of a trademark, we start with these steps:

1) Verify Inherent Strength,

2) Verify Right to Use,

3) Verify Right to Register,

 4) Verify the potential mark (as currently used) Functions As A Mark, and

5) Verify that the Goods and Services ID is both the correct and the maximum claim that are user can make and verify that the Goods and Services ID meets USPTO requirements before filing.

*We don’t stop here but this is a good start!


Our rates are very reasonable. We can provide each step individually or as a trademark registration package. Our fixed price per classification for the whole package may be less than what you might pay to another attorney or law firm just to answer a USPTO Office Action Refusal at an hourly rate.

We can provide a quick and economical Response to Office Action (ROA). See Why Should I Have A Trademark Attorney Answer My Office Action if you have already applied and been refused. If someone is using your trademark in a way that harms you, we may be able to stop them through an opposition or a cancellation proceeding. If you are being opposed or are threatened with cancellation, we may be able to help as well. Timing is very important for a bunch of reasons: Opposition times are very short, times to answer Petitions to Cancel are only 40 days from when the petitions are filed, times to answer Oppositions can be very short, and sitting on your rights in general can cause problems. Don’t delay calling. We can help.


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