Trademarks 101: Start Smart by Developing a Strong Trademark

This post was written prior to our January 2017 merger, under our previous firm name, MacPherson Leslie & Tyerman LLP.

If you are innovative enough to create a new product, you are innovative enough to coin a new term to name your product. Why is this a good idea? Because invented or fanciful words are strong trademarks and strong trademarks carry several advantages over weak or descriptive trademarks. This article will explain what it means for a trademark to be inherently strong and why inherently strong trademarks are so advantageous.

What is a Strong Trademark?

A strong trademark is one that is truly unique and completely unrelated to your goods / services. Ideally, it is a word or phrase that will have no meaning in any language except to identify your goods / services. Some relatively new but very successful brands that utilize strong trademarks include Swiffer®, Febreze® and Twitter®.

Conversely, a weak trademark is one that is descriptive of the associated goods / services. They are often taken from the common terms of a given industry or describe the character or quality of the goods / services. While some weak trademarks have grown into successful brands, their growth likely involved disputes and expenditures that a stronger trademark would not have endured.TMspectrum

Why Do I Need a Strong Trademark?

A strong trademark is superior for several reasons:

Protection.

Unless a descriptive trademark has been used so extensively that it has taken on “secondary meaning” in the minds of consumers, a descriptive trademark cannot be registered and even if it is registered, may be subject to cancellation. For example, a trademark for French Press for use in association with coffee presses was recently cancelled because it was found to be descriptive of coffee presses.Even if your trademark is not quite descriptive but “merely suggestive”, the Trademarks Office may object to registration on the basis that your trademark may be seen as clearly descriptive. Overcoming these objections can be costly and delay your registration.

Availability.

If your mark is suggestive or descriptive, there is a good chance that someone else in your industry is already using it (or a very similar mark). For example, iPhone was already a registered trademark owned by a company called Comwave Telecom Inc. in Canada when Apple Inc. launched the product in Canada. Apple is reported to have bought the registration from Comwave for an undisclosed but undoubtedly large sum.If your proposed trademark is a made-up word then by definition it will not be in use by a third party and therefore be available to you.

Reduce Enforcement Problems.

Even if a registration can be obtained for a weak trademark, it may be difficult to enforce. First, when you attempt to stop an infringer, they may take the position that your trademark is descriptive and, if necessary, attempt to have it cancelled. Second, a weak trademark is generally only entitled to a narrow scope of protection making it difficult to enforce against third parties that use trademarks that are similar but with only relatively minor differences.  

Domain Name Availability.

One consideration that often goes unappreciated is your ability to get a website domain name. When it comes to desirable domains at .com, .net or .ca, descriptive and suggestive terms tend to be already registered by existing businesses or so-called “domainers”. If a .com or .ca domain is available, it is likely at a premium price. If your proposed trademark is a word that you have invented, it is far more likely to be available as a domain (and far less likely to be premium priced).

Salvaging Weak Trademarks

Many brand owners find themselves with weak trademarks for various reasons. If you have a weak trademark and transitioning to a new brand is not a viable option, there are strategies for protecting it, including acquiring “secondary meaning” in the mark which brands such as LensCrafters® have done. Acquiring secondary meaning requires developing a long-term plan with a trademarks professional to collect and maintain evidence of your trademark’s acquired distinctiveness.

Other strategies may be available depending on the particular mark. These include focusing on a distinctive logo or adding an additional distinctive element to create a new, distinctive trademark that will still appear familiar to your existing customers.

Key Takeaway: Start Strong by Developing a Unique Trademark

As is often the case with legal advice, the earlier you get proper trademark advice, the better your odds of avoiding a dispute and the less you will pay for legal services in the long run.

About the Trademarks 101 Series

MLT’s Trademarks 101 is a series of posts about trademark law designed to provide a plain-language overview of trademark law for businesses, marketing and adverting professionals, and in-house counsel. Trademarks 101 comes from MLT’s trademarks team: Chris Woodland and Kursty Peterson. These posts are intended to be a supplement to – not a replacement for – the advice of an experienced trademark professional.

The five posts in this series include:

  1. Start Smart by Developing a Strong Trademark
  2. Pre-screening and Searches – Ensuring Your Trademark is Available
  3. Five Reasons to Register Your Trademark
  4. Use it or Lose It – Eight Tips for Keeping Your Trademarks Strong
  5. Going Global – Protecting Your Trademark Abroad