What is Trademark Strength and Why Does it Matter?
How can a company own the commercial rights to a common abbreviation like LOL or a word like aloha? This was the question people asked when P&G filed for trademark registration of LOL, WTF, and FML for soaps this year. A Chicago company obtained registration for ALOHA POKE. Does a Chicago company own the word ALOHA by registering ALOHA POKE as a trademark? The answer lies with the concept of trademark strength. The scope of trademark rights depends on the trademark strength. A weak mark has narrow rights while a strong mark has broad rights.
How to Measure Trademark Strength? What makes a mark strong or weak?
A strong mark is one that is 1) inherently distinctive and 2) commercially recognized.
Inherent Distinctiveness is a measure of the relationship between the mark and its goods/services. A mark’s descriptives of the goods or services is a sign of weakness. The mark LA GEAR is fairly descriptive of the goods, shoes and apparel, and the geographic origin of the goods, Los Angeles. On the opposite end of the spectrum are coined marks. Coined marks invented to serve as a mark, is strong. Consider the coined mark GOOGLE. Google has no other meaning except to serve as a mark.
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In the middle of the spectrum of distinctness are arbitrary marks and suggestive marks. An arbitrary mark is a word that has no relation to the goods, and a suggestive mark is one that does not immediately inform the consumer of the goods or services. A suggestive mark requires imagination, thought, or perception to reach a conclusion as to the nature of those goods or services.
Commercial Recognition is the measure of how known a mark is in the marketplace. As evidence of commercial recognition, consider the number of sales, amount of advertising, and prominence in social media.
Circling back to LOL for soaps, that mark is somewhat distinct because it is not descriptive. The mark has low commercial recognition because it has not yet been used. DOVE, however, is a well-known soap brand. The law is again pretty intuitive. We can agree that rights from DOVE extend beyond those from LOL.
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What if You Use a Weak Mark?
Although you may be able to register a weak mark as a trademark, there are disadvantages to using a weak mark. A weak mark is entitled to a limited range of exclusivity.
Consider the mark LA GEAR. It seems obvious that the owner of LA GEAR cannot prevent others from using LA and/or GEAR, except in very limited circumstances. In contrast, the mark Reebok is arbitrary or suggestive (a rhebok is a South African antelope), and likely has broader exclusivity. If an NFL team adopted the Reebok as a mascot, it might not be able to register REEBOK for apparel.
Also consider this common scenario, is LOL for soap confusingly similar to LOL for diapers? Maybe not, because LOL is a weak mark.
A court noted that “Determining that a mark is weak means that consumer confusion has been found unlikely because the mark’s components are so widely used that the public can easily distinguish slight differences in the marks, even if the goods are related.”
Conclusion About Trademark Strength
A brand name that does not describe the goods/services or the geographic origin of the goods/services makes a stronger trademark that is easier to enforce.