To Verify INHERENT STRENGTH Verify the potential trademark is a Strong Trademark(TM) rather than a Weak mark. “A strong trademark is one that is rarely used by parties other than the owner of the trademark, while a weak trademark is one that is often used by other parties. The more distinctive a trademark, the greater its strength.” Exxon Corporation v. Texas Motor Exchange of Houston, 628 F.2d 500, 504 (5th Cir.1980).

The difference between a suggestive mark and a descriptive mark is a matter of fact. The classification of a mark is generally a question of fact. Lane Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc., 192 F.3d 337, 344 (2d Cir. 1999) (stating that the factual question is how the purchasing public views the mark). This distinctiveness classification is a very important one because of its effect on registerability.  A suggestive mark can be distinguished from a descriptive mark by considering (1) whether imagination is necessary to connect the mark to some characteristic of the product, (2) whether competitors use the term as a trademark or use the term to describe their product or service, and (3) whether the use of the term would deprive competitors of a way to describe their goods. Menashe v. V Secret Catalogue, Inc., 409 F.Supp.2d 412, 423 (S.D.N.Y. 2006). (In the chart below the Merely Descriptive Matter is not registerable on the Principal Register unless it can acquire sufficient acquired distinctiveness or unless it is Suggestive to begin with.. Go Green!)

Why Not Have a Weak Trademark? What is a Weak Trademark?

Weak trademarks are given narrow protection. In re Hunke & Jochheim, 185 USPQ 188, 189 (TTAB 1975), the TTAB provided the following explanation regarding the strength of a mark on the Supplemental Register:

[R]egistration on the Supplemental Register may be considered to establish prima facie that, at least at the time of registration, the registered mark possessed a merely descriptive significance. This is significant because it is well established that the scope of protection afforded a merely descriptive or even a highly suggestive term is less than that accorded an arbitrary or coined mark. That is, terms falling within the former category have been generally categorized as "weak" marks, and the scope of protection extended to these marks has been limited to the substantially identical notation and/or to the subsequent use and registration thereof for substantially similar goods.

Why does having a Strong Trademark matter?

A Strong Trademark is a strong marketing tool. 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 weak trademark is made up of words or symbols that others have a right to use so any one user has no exclusive rights to use.

An inherently distinctive trademark is stronger than a mark that is often used by others or that is merely descriptive, generic, or has other descriptiveness issues (i.e., being geographically descriptive, misdescriptive or others):

Note: Even though the USPTO does not ‘enforce’ trademark rights--A registered mark has several levels of protection through the USPTO:

What is involved with verifying a trademark for inherent strength?

Searching federal, state, and common law marks to see if the potential trademark or parts of the potential trademark are being used by third parties. One of the goals of a Strong Trademark Registration is to reserve the exclusive use of the potential trademark which means verifying that the potential trademark is not already used by prior users (registered  or unregistered).

Note: The USPTO does NOT determine the right to use a mark, only the right to register a trademark. The USPTO and the TTAB have no authority to determine the right to use, or the broader questions of infringement or unfair competition (TBMP §102.01), but only the right to register on the federal registers. However, the right to use a mark may be challenged by a prior user under the Lanham Act in an opposition to registration, a cancellation proceeding or in federal court. See Trademark Right To Use-Search and Clearance for more information.

Analyzing where the potential mark falls on a distinctiveness continuum. Distinctiveness is the opposite of descriptiveness for trademark purposes. The distinctiveness of trademarks varies along a continuum (often depending on how the trademark is used) 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 generally at least 5 years of use). Generic marks (common or class names for goods or services) are not registerable as trademarks under either the Principal or Supplemental Register and receive no common law protection as trademarks.

See Why Should I Have A Trademark Attorney Answer My Office Action if you have already applied and been refused.


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