Law Articles

Return to Law Dictionary Index

Strength of Different Trademarks

What is the strength of different marks?

The strength of a trademark is its ability to distinguish the goods or services of one from the goods or services of another. Generic marks have no strength as trademarks. The strength of all other trademarks is a function of the uniqueness of the mark compared to the goods or service coupled with the level of consumer recognition of the trademark.

What is acquired distinctiveness or secondary meaning?

Acquired distinctiveness and secondary meaning are different terms for the same thing. To be treated as a trademark a mark must have a certain quantum of distinctiveness. That distinctiveness can be inherent in the mark, i.e. inherent distinctiveness, or be developed in the minds of the consumers, i.e. acquired distinctiveness. Acquired distinctiveness may be thought of as consumer recognition of the trademark as an identifier of source, sponsorship, affiliation or other business relationship.

Do trademarks need acquired distinctiveness before a registration may be sought?

No. Trademarks do not even have to be used before a trademark registration may be sought. See Question "Do I have to be using the trademark before seeking a registration?" on the Application Procedure page.

To be registered on the principal register all trademarks must have a certain quantum of distinctiveness. Marks that are neither generic nor descriptive of the goods or services are said to have enough "inherent distinctiveness" to be registered without proof of "acquired distinctiveness".

Descriptive and special case trademarks can be registered on the supplemental register without proof of acquired distinctiveness, although the rights offered are nominal. Descriptive and special case trademarks can be registered on the principal register upon proof of acquired distinctiveness (which is presumed after the trademark has been on the supplemental register for five years).

What marks need to have acquired distinctiveness before they are considered trademarks?

The following marks need proof of acquired distinctiveness before they are considered trademarks:
1)marks that describe the goods or services,
2)foreign terms that translated are descriptive in nature,
3)single colors,
4)surnames,
5)misspellings of descriptive terms,
6)product configurations (usually) and
7)geographically descriptive marks.

How can acquired distinctiveness be proven?

Acquired distinctiveness can be proven either directly or indirectly by any evidence that would be admissible in court.

About the Author:

N. Paul Friederichs, founder, started practice as a patent attorney in 1992 at a major Minneapolis, Minnesota law firm where he was the highest performing associate. In 1993, he started and developed Friederichs Law Firm with his father. Throughout this time Paul�s experience was heavily weighted toward litigation. He served such clients as Tonka Toys, American Harvest and Boston Medical.

He can be reached at http://www.angenehm.com/

Return to Intellectual Property

Return to Law Dictionary Index