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Archived updates for Wednesday, October 27, 2004

Choosing a Strong Mark

According to an Ocotober 8, 2004 article by Diane Duhaime and Elizabeth Pasquine, trademark law categorizes marks based upon their inherent level of strength. Selecting marks on the stronger end of this "spectrum of distinctiveness" is almost always a better investment than selecting a weaker, descriptive mark.

At one end of the spectrum, so-called "fanciful marks" are the strongest because they consist of made-up words, such as EXXON® for crude oil and KODAK® for photographic cameras. It would be very difficult for an infringe to successfully claim that they need to be able to use even a vaguely similar term in connection with their own products. Arbitrary marks, the next strongest category, use common words to identify and distinguish products that are not normally associated with those products, such as APPLE® for computers, and MARS® for candy.

Suggestive marks are slightly less strong and provide just a hint about the nature of the goods or services, but still require some mental gymnastics to arrive at the connection, such marks would include COPPERTONE® for suntan oil and CHICKEN-OF-THE-SEA® for tuna fish. Descriptive terms, like BANK OF AMERICA® for banking services, are not initially protectible as trademarks, but can ater significant use, become protectible as trademarks if they have developed a "secondary meaning" with consumers to identify the corresponding goods or services.

At the opposite end of the spectrum, so-called "generic terms" can never be protected as trademarks because they signify a class of products, rather than the source or origin of a partiucular product. For example, although Aspirin is a trademark that was originally coined by the Bayer company of Germany for acetylsalicylic acid, in some countries (including the United States) the name is used as a generic term for the drug rather than the manufacturer's trademark. In other countries where Aspirin retains its secondary meaning and therefore still functions as a trademark, the initials ASA are used as the generic term.
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