When selecting a trademark, the goal to choose a mark that is both distinctive and exclusive. Distinctiveness refers to the mark either being fanciful, arbitrary, or suggestive in connection with particular goods or services, rather than merely descriptive. Exclusive refers to whether there are any third parties using the same or similar mark for the same or similar goods or services.
When assessing exclusivity, both identical and confusingly similar marks are considered because marks need not be identical in order to create a likelihood of confusion. One factor to consider is whether the mark in the marketplace is in what we call a “crowded trademark field.”
What is a Crowded Field?
“Crowded field” describes a situation where a certain term has been incorporated into numerous trademarks for particular goods or services. For example, there are many marks containing the word “Nature” in connection with food products, or “Green” in connection with cannabis products. In this context, the “crowded” term would be considered weak, and it would be difficult for any one of the users to claim exclusive rights in the term.
Challenges in Crowded Fields
There are many challenges with selecting a mark with a “crowded” term, such as obtaining registration and enforcement. Selecting a mark with a “crowded” term presents marketing obstacles, and you may face an uphill battle with search engine optimization trying to gain traction and attention to your products among the many users. Some pet owners have difficulty distinguishing among Pet Food Express, PetSmart, and Petco, and only know where they shop by the convenience of location. But it does not mean that you cannot obtain trademark protection.
Though the challenges brought on by “crowded” terms are not insurmountable, we strongly recommend setting yourself up with a strong mark that is both exclusive and distinctive from the outset, in order to obtain the most extensive scope of protection.