Trademarks are an important aspect of any business. Your trademarks help consumers identify the source of goods and/or services offered in the marketplace. But what makes a trademark strong? The key to any strong trademark is its distinctiveness with respect to the goods and/or services offered under it. The following chart illustrates the five levels of distinctiveness that the United States Patent and Trademark Office (hereafter, “USPTO”), considers when assessing whether to grant registration in a trademark:
Fanciful and arbitrary trademarks are virtually guaranteed to receive federal registration at the USPTO. Kodak and Xerox are classic examples of fanciful trademarks. Neither trademark suggests or describes the goods and/or services offered. With the appropriate marketing strategy, these types of trademarks leave a lasting impression on the consumer.
Suggestive trademarks and descriptive trademarks are common. While suggestive trademarks are generally registerable, descriptive trademarks are generally not registerable. Descriptive trademarks can be registered if it can be demonstrated that the trademark has acquired “secondary meaning;” that is, the mark is recognized by the consumers as an indicator of the sources of the goods or services. One way to establishing “secondary meaning” is having used the trademark in interstate commerce for the same goods and/or services for five consecutive years.
Generic terms are weak trademarks, if trademarks at all, as they identify the goods and/or services themselves rather than the source of the goods and/or services. These types of trademarks are never registerable at the USPTO.
When establishing your brands, make sure you have strong trademarks. Relevant consumers should be able to identify a trademark and connect it to you, whether directly or inherently. Apple is an excellent example of a trademark that everyone can trace back to the source of the goods and services offered. The same can be said with respect to the trademark, Pumpkinhead, a popular seasonal beer created by Shipyard Brewing Company located in Portland, Maine. A good trademark is an important aspect of business success. Get creative with your names and register them at the USPTO so that you, not others, reap the rewards of creating distinctiveness in the marketplace.
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John M. Burke is a trademark attorney who assists clients in selection, screening, registration, licensing and enforcement of trademarks and service marks. In addition to trademark prosecution and enforcement, John works with clients to identify, manage and license their intellectual property. Through Caseiro Burke's Litigation Practice, John also provides intellectual property litigation service.
Caseiro Burke is an intellectual property law firm providing legal services to individuals and businesses around the world. We offer clients creative, cost-effective and reliable legal solutions in all intellectual property matters. Our dedication to the practice of intellectual property law provides our clients with the focus of attention necessary to establish, protect and commercialize their innovations. Whether you are a sole inventor looking for patent protection for your invention, a distillery protecting its brand or a manufacturing company asserting or defending a patent infringement claim, Caseiro Burke will work with you to achieve effective results.
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