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Strong vs Weak Trademarks

Posted by ipelton on: August 26th, 2009

Some trademarks are entitled to greater protection than others. There are five basic types of marks, presented below in order from those with the most protection to the least, they are:

Coined: completely new and made up terms, such as

  • Exxon® for oil and gas
  • Kodak® for film and cameras
  • SYSAX® for Encryption and decryption software
  • ERBX® for Industrial protective eyewear; safety eyewear

Arbitrary: not made up, but unrelated to the goods or services, such as

  • Yahoo!® for internet services
  • MAPLE® for Entertainment, namely, live music concerts
  • Apple® for use with computers
  • 3 LEAF PRODUCTIONS® for audio editing and production services; musical composition for others; sound design services

Suggestive: words which relate to the goods or services, but are not descriptive of them ,such as

  • ROLLUPMATIC® for aluminum hurricane shutters
  • CAFE GELTATOHHH!® for Restaurant services featuring gelato, paninis and coffee
  • EBEANSTALK® for Online retail store services featuring developmental toys, games, puppets, and puzzles for children
  • DURAWRAP® for Plastic stretch film for industrial and commercial packaging use for wrapping cargo
  • ROCK & ROLL® for baby strollers
  • BLUE LINE MARKETING® for advertising and marketing services to associations, manufacturers and service providers in the fields of law enforcement, police, public safety, sheriff, corrections, and physical security
  • TUFFRAX® for Ceiling-suspended shelves for residential use

Descriptive: terms which can be used to refer to a product or service, or its functions or characteristics, such as

  • Sports Illustrated® for sports magazine
  • US PRO GOLF TOUR® for golf tournaments
  • CERTIFIED MEDICAL HYPNOTHERAPIST® for Educational services, namely, conducting classes, seminars, and conferences in the field of hypnotherapy
  • WORLD BUSINESS DIGEST® for Educational television programming in the field of business

Generic: words which are commonly used to refer to a good or service, or answer the question “what is it?” (such as “Laptop” for a portable computer)

Coined, arbitrary and suggestive names are generally able to become registered trademarks, provided someone has not already registered a confusingly similar mark for a related product or service. Coined and arbitrary marks are given the ‘strongest’ protection and are thus the most desirable. Descriptive marks may sometimes be registered, but generally are afforded less protection. For this reason, descriptive marks are considered ‘weak.’ Generic trademarks are the weakest of all – they are entitled to little or no protection.

In my opinion, suggestive names or coined terms that are suggestive are generally the best — because they are entitled to good protection, creative, and tell the consumer something about your goods or services.

Learn more About Trademark Registration at tm4smallbiz.com.

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