Strength of Marks

Q

Strength of Marks

The strength of a trademark is extremely essential in determining its performance and reach in the market as well as the scope of legal protection it merits. The primary feature of a strong trademark lies in its inherent distinctiveness that successfully separates and highlights the proprietor of such class(s) of goods and/or services pertaining to that trademark alone from other goods and/or services sold in the market. Not only that, a strong trademark is easier to be registered in the absence of competing interests from rival proprietors.

Classification of Marks – Which among them has a better chance of being registered

Distinctiveness as a character though does not exist in all trademarks to the same degree. There is a hierarchy of sorts that classifies all such trademarks with differing degrees of distinctiveness into five categories in descending order of strongest to weakest:

 

  1. Fanciful MarksA fanciful mark, also known as a coined mark, consists of a combination of letters and is invented for the sole purpose of functioning as a trademark. When not used for a good it does not have any inherent meaning and can be used to distinguish the owner’s goods and/or services. Interestingly, this kind of mark also does not have any relation whatsoever with the good (s) or service (s) it represents.

    Examples: EXXON for petroleum products, KODAK for cameras, XEROX for document solutions and products as well as services

    From the legal and marketability perspective, fanciful or coined marks are often accorded the best degree of protection from unauthorized use. However, since this kind of mark does not have any meaning as such, considerable time and money have to be invested in educating the public regarding the nexus between the invented word/phrase and the goods/services represented by the mark, through advertising, contests, or different kinds of marketing campaigns.

 

  1. Arbitrary Marks – An arbitrary mark is one that has a common meaning but is used to represent goods or services unconnected to that meaning. This sort of makes it a super mark and gives it a high degree of legal protection as well as market reach. It only differs from a fanciful mark in the sense that it does have some meaning when used in common parlance, however, does not represent any qualities, features, genre or associated aspect of the goods/services. Hence, it can easily be distinguished by the public.

    Examples: APPLE for phones and computers, BLACKBERRY for suits, LOTUS for software, CAMEL for cigarettes.

    In case of arbitrary marks as well, advertisement and mass awareness programs need to be conducted to educate the public regarding the trademark and the goods and/or services it represents.

 

  1. Suggestive Marks – Suggestive marks are what the term suggests – they are marks that suggest or hint at the qualities or characteristics of the product or service in an innovative manner. They do not describe the product or service as such, but they require the consumer to exercise “imagination, thought and perception” to conclude on the exact nature of the goods.

    Examples: Citibank (financial services), AIRBUS (for aeroplanes), MICROSOFT (software for computers), Greyhound (Bus lines), Jaguar (automobile), SILICON GRAPHICS (suggestive of graphically oriented computers)

    Though more susceptible to legal entanglements and accorded less protection (since they may be considered as descriptive by some).

    However, they are more common than fanciful or arbitrary marks, since they inherently have more sales appeal owing to the suggested connection already established with the consumer; this automatically means less marketing and advertising measures taken to educate the public regarding connecting the mark with the goods/services under sale.

 

  1. Descriptive Marks – A descriptive mark is one that consists of a word (or words) put together to describe the nature and essence of goods and/or services under sale. A mark is considered descriptive if it “conveys an immediate idea of the ingredients, qualities or characteristics of the goods”. Word/ words that merely describe an attribute or a feature, end result or use of a product, are usually not granted registration. Descriptive or even misdescriptive marks are potentially very weak in terms of registrability as consumers looking at the mark can immediately reach a conclusion as regards the nature and characteristics of the product/service under sale. It does not work as a distinguishing factor and hence, is best avoided when looking for a trademark name. Even surnames are included in the ambit of descriptive marks.

    Examples: LIGHT for portable computers (describing its weight), COLD AND CREAMY for ice-cream, FAST BAUD (describing speedy modems), SMITH SHOES

    A descriptive mark though can later become protectable as a trademark if it acquires secondary meaning; meaning thereby that apart from the obvious meaning understood in the descriptive term of the mark, it becomes recognized as a mark having a single source of origin for the related products, indicating a particular function. This occurs when the descriptive mark has exclusively been used as a trademark for years, as well as massive amounts of advertising and publicity.

 

  1. Generic Marks – A generic mark is one that is based on the genre of the product/service. It is extremely descriptive and ends up defining the product under sale. These marks are not granted registration since it would be inappropriate to grant exclusivity to a particular manufacturer/service provider as regards certain words that generally define a product.

    Examples: SMARTPHONE, E-MAIL, CLOCK

    It is pertinent to note that even a valid, protected trademark can become generic owing to continuous misuse by the public, as had happened in the case of XEROX. The company had to launch massive advertising campaigns to prevent misuse of the same. It is necessary to educate the public about not using the mark as a “verb” or in “plurality” to avoid such scenarios.

 

Keeping in mind the degree of strength of distinctiveness as per the classifications described above, it follows that choosing fanciful and arbitrary marks would be the best way to protect and market one’s trademark better.


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