What trademark types are strongest?

Talcott Franklin in his book, Protecting the Brand, has classified the types of brand names by their strength as legally protected trademarks.

The strongest brands are so-called “fanciful” marks. These are names (and/or identifying marks) that are invented to function as trademarks. This is another way to describe “coined names”. Here we’re talking about names like Kleenex, Swiffer and Oreo. The only problem is that they must be vigilantly protected both internally and by stakeholders in general lest they become the product itself rather than the product’s source. Then you find people using the word as a noun (Google is my search engine instead of I use the Google search engine) or verb (I’ll Google Talcott Franklin), and that weakens the brand legally. In fact, many fanciful names have because generic because of the owner’s lack of customer education and vigilant protection (Thermos, Yo-Yo and Trampoline are examples).

The second strongest marks from a legal standpoint are “arbitrary” names. Franklin’s definition of arbitrary names is the same as mine: words or symbols in common use but not in the context of the product being named. Franklin’s examples include “Apple” and “Camel”.

Franklin says that courts give the next strongest degree of protection to “suggestive” names and marks. These names suggest an attribute or characteristic of products but do not describe them. Often they evoke positive associations. Commonly, these names are metaphors that allude to benefits. “White Rain”, “Husky”, “Titan” and “Mr. Clean” are examples.

“Descriptive” marks will have the lowest degree of protection if challenged in court. And, this type of name/mark will be the type most often challenged as well. That’s because descriptive names tend to the generic. Synonyms for product type will obviously fall into this category. But so will those words that are descriptive of a product characteristic. Some examples: “Progressive” and “Clean-Up”.

In addition the USPTO will not award registration to marks that incorporate geographic names, personal names, common symbols, titles of publications and several more obscure classifications.

As I’ve said every time I blog about trademarks, copyrights and incorporation, I suggest retaining an intellectual properties attorney. The regulations can be pretty convoluted and the case histories too numerous for comfort.

Since a trademark can be the foundation of the brand, it’s best to get it right from the beginning. As I’ve said in several blogs and other web pages, “Brand Smart for the Start”.

Martin Jelsema

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