• Relative Strength of Marks
    The cornerstone of trademark protection is that without proper policing the mark can become generic. (Asprin, Escalator, Cellophane) It is a duty of the trademark owner to prevent confusion in the marketplace and to protect its mark.
    Federal registration adds a number of important remedies, including possibly treble damages and attorney fee awards.
    Relative Strength of Marks. In ascending order of strength:
    Generic - these can not be registered as they are the common descriptive name of a particular class of products or services (ASPRIN)
    Descriptive - these can only be registered upon demonstrating secondary meaning, i.e. that through use, the mark has acquired a meaning in addition to its common meaning that identifies a source of goods or services (WEIGHT WATCHERS)
    Suggestive these marks are inherently registrable, and suggest the nature or quality of the products or services (DIAL-A-MATTRESS mattress sales)
    Arbitrary these marks are registrable as the terms or symbols have no direct connection or association with the particular goods or services (APPLE for computers)
    Fanciful these are typically made up terms (KODAK for photographic supplies)
    It is important when selecting a mark for adoption and evaluating a mark for potential infringement to honestly determine the relative strength of the mark in question. The more descriptive/suggestive they are, the narrower the scope of protection. The more arbitrary or fanciful they are, the wider the scope of protection. The stronger the mark is the further away you can keep other marks.
    Trademark Rights come into existence in one of two ways, the earlier of: 1) first use in commerce, or 2) first to file an intent to use application, or based upon foreign application or foreign registration in the US Patent and Trademark Office.