The “strength” of a trademark relates to how likely a mark is to be remembered and associated in the public’s mind with the mark owner. The stronger a trademark, the greater protection it is accorded by trademark law.
Conceptual trademark strength refers to the level of inherent distinctiveness of a mark. A mark can be inherently distinctive. (Alternatively, a mark may acquire distinctiveness through extensive and continuous use in the market.) During examination of a new application, the United States Patent and Trademark Office assess the conceptual strength of an applied-for mark to determine whether the mark is registrable. Being limited to the four corners of the application, the Office cannot consider commercial strength, unless the evidence is being presented in connection with a claim of secondary meaning.
There are 3 types of inherently distinctive marks, discussed below in order of descending conceptual strength:
– Fanciful marks are not actual words, but made-up terms, like ACCENTURE for consulting, EXXON for energy products, STARBUCKS for coffee, PINTEREST for social networking, and LEAFLY for cannabis news source and directory. Fanciful marks are the strongest type of mark because the commercial meaning is solely derived from the use by the trademark owner.
– Arbitrary marks are real words, but words that have no literal, or even a suggestive, meaning in connection with the product. Examples include LEAPFROG for educational games, APPLE for computer products, AXE for men’s toiletries, JACK IN THE BOX for fast food, DAWN for cleaning products, and VOLCANO for a vaporizer.
– Suggestive marks allude to and only indirectly relate to the product. Examples of suggestive marks are CHICKEN OF THE SEA for tuna, DREAM HOTEL for hotels, PEDIGREE for pet food, PRUDENTIAL for insurance services, GREEN BRANCH for banking services, COPPERTONE for sunblock, and SUBLIME for cannabis products.
In the marketplace, the strongest marks are not necessarily fanciful or arbitrary. Hence, conceptual trademark strength is not the full story when evaluating a marks’ overall strength. Commercial trademark strength is also considered and is based on actual marketplace recognition. Courts may consider many different kinds of evidence in determining the commercial strength of a mark.
Surveys, sales success, and unsolicited media coverage are generally considered valuable means of ascertaining a marks’ commercial strength. For example, sales success indicates that consumers are actually interacting with the mark owner’s products, and the relevant consumers are therefore more likely to link a particular mark to the owner as the source of such goods. Advertising expenditures and length of use may be helpful, but do not necessarily prove commercial strength. A company can spend millions of dollars advertising a product, but if that product is ultimately unsuccessful, the dollar amount spent on advertising the brand name does not help to prove that customers actually engaged with or even remember the product or the source. There are numerous examples of little-known products with expensive advertising budgets that fail to create any real consumer recognition and goodwill in the mark. Who remembers VAULT soda, a failed product that Coca-Cola spent around $2.5 billion advertising over a two year period?
Ultimately, it is a combination of both conceptual and commercial strength that creates a strong and enforceable brand.