A trademark’s “strength” determines how broadly or narrowly it can be protected in cases of possible trademark infringement. Two factors determine a trademark’s overall strength. These are (1) “inherent” or conceptual strength and (2) “commercial” strength.
Whereas conceptual strength measures how distinctive a term is based on its meaning, commercial strength measures marketplace recognition. Some terms are so conceptually weak in relation to their goods/services, that they cannot function to distinguish such goods/services in the marketplace without being bolstered by significant amount of commercial strength.
Conceptual/ Inherent Strength of Trademarks
The “inherent” or conceptual strength of a trademark is reflection of how unique or, on conversely, how obvious or commonplace a term may be as a trademark for its particular goods/services. A term’s inherent strength for trademark purposes will fall into one of the following categories, going from strongest to weakest: (1) Fanciful or Arbitrary (“Starbucks” or “Kodak”) (2) Suggestive (“Sugar & Spice” for baked goods) (3) Descriptive or Laudatory (“The Home Depot” or “America’s Best.”); (4) Generic (“Multi-grip” for exercise bands featuring multiple grips).
A trademark falling into the first category will be afforded the broad legal protection. The owner of an arbitrary or fanciful trademark may pursue claims of infringement over the widest range of related products or variations on the trademarked term. On the other end of the spectrum, marks that are so conceptually weak that they verge into descriptive will be restricted to claims of infringement against only those competitive trademarks that are nearly identical, and for nearly identical goods/services.
Commercial Strength in Trademarks
To see commercial strength, or marketplace recognition, in action, one need look no further than the Supreme Court decision relating to whether Booking.com was generic for hotel reservation services in United States Patent and Trademark Office v. Booking.com B.V. (2020) .
In this case, the United States Patent and Trade Office (USPTO) had attempted to ignore marketplace evidence of consumer recognition and reject the Booking.com mark for federal registration based on solely on its extreme conceptual weakness. The U.S. Supreme Court rejected this basis, holding that consumer recognition is the deciding factor. However, consumer-survey evidence in this case had demonstrated that 74.8% of those surveyed recognized Booking.com as a brand rather than as a designation of generic category of services.
That said, the Court’s decision also acknowledged that even though Booking.com triumphed in its legal battle with the USPTO, it’s legal protection against infringement would be very limited due to its conceptual weakness.
So, is your trademark strong? Does it even need to be?
Your business’s success may be a clue that your trademark is commercially strong. But if you are using something highly descriptive as your trademark, it will be difficult to stop a competitor that is getting too close to your brand for comfort. You may also have difficulty proving your entitlement to use the trademark if another business claims that you are infringing on their own brand. Put one way, the more obvious the mark, the more likely that someone may have superior rights that predate yours.
Our firm is not here to tell you what might be commercially successful as a brand. We are here to guide you through the legal significance of your intellectual property so that you can make informed and strategic decisions to grow your business and mitigate your risks.
Your trademarks is your goodwill, and you should be the one reaping all the benefits. We are here to help.
