We’ve gone over the obstacles to obtaining federal trademark protection at length, but given recent inquiries our cannabis trademark attorneys have been receiving lately, it seemed high time to revisit what exactly makes a trademark “strong” or “weak.”
I regularly have clients come to me with catchy marks they or their brand consultants have developed, but are not eligible for trademark protection. There is a spectrum of strength when it comes to trademarks. The distinctiveness, or strength, of a mark will determine both how well the mark performs from a marketing and branding perspective, as well as the level of legal protection to which it is entitled. When a mark is highly distinctive, identifying the owner of the mark as the source of the goods sold, the mark is strong. And when a mark is not inherently distinctive, or when a mark is the same or very similar to one already used by others, the mark is weak. Here are the types of marks on the spectrum, from strongest to weakest:
- Fanciful Marks: These marks are inherently distinctive and consist of a combination of letters with no meaning; they are invented words. Some examples of famous fanciful marks are EXXON and KODAK. These marks can be more difficult from a marketing perspective initially, because the public must be educated through advertising before they will associate the owner’s goods or services with the mark.
- Arbitrary Marks: These marks are composed of a word or words that have a common meaning, but have no relation to the goods or services to which the mark is applied. Perhaps the most famous example of an arbitrary mark is APPLE, used on computers. As with fanciful marks, these marks are highly distinctive.
- Suggestive Marks: Suggestive marks hint at or suggest the nature of a product without specifically describing the product. An example of this type of mark is AIRBUS for airplanes. These marks can be appealing from a marketing perspective, because they require less education of consumers than arbitrary or fanciful marks, but they are also typically entitled to less extensive legal protection.
- Descriptive Marks: These marks are comprised of words that actually describe the goods or services provided; descriptive marks are too weak to function as a trademark and cannot be registered. Note that it is possible to register a descriptive mark if it has obtained secondary meaning due to use in commerce for some years – in the nascent cannabis industry, however, it is unlikely many marks would meet these requirements.
- Generic Words: These words and phrases are so inherently descriptive of a product or service as to be incapable of functioning as a trademark; they are the common names of the product or service in question, and cannot be registered.
One of the most common grounds for rejecting a trademark application is that the proposed mark is “merely descriptive.” For example, “World’s Best Cannabis” would be merely descriptive for cannabis and cannot be registered. Trademarks that are merely the name of an individual, for example, are also ineligible for federal trademark protection. So, a name like “Alison’s Cannabis” wouldn’t fly. Similarly (and this is one we see often in the cannabis industry), marks that are primarily geographically descriptive will be refused registration by the USPTO. For example, “Seattle Cannabis Company” and “Washington Grown” are primarily geographically descriptive and thus not eligible for federal trademark protection.
And on the flip-side, marks can be rejected for being deceptively misdescriptive as well. Interestingly, the USPTO, in its online guidance and resources, gives the following example of a deceptively misdescriptive mark: “[T]he mark ‘THC Tea’ would be deceptively misdescriptive of tea-based beverages not containing THC.” So if you are registering your mark for ancillary goods or services, as we’ve previously suggested, be mindful that including a reference to cannabis in your mark will not render the mark deceptively misdescriptive of those goods or services.
If you’re starting from scratch in branding your company or products, it’s a great idea to run any proposed marks by your trademark attorney before you invest too heavily in brand development. An experienced cannabis trademark attorney will be able to quickly identify marks that are merely descriptive, and can advise whether you run the risk of adopting a mark that is deceptively misdescriptive. And remember, if you don’t intend to obtain a federal trademark registration of your brand, that is still not a reason to adopt a descriptive or weak mark. If your name is a no-brainer, chances are that someone else has already thought of it and used it as well. Or if they haven’t adopted it yet, they likely will down the road. When the market becomes flooded with similar names, it becomes difficult for consumers to tell them apart. Putting in the initial work to develop a strong brand is always worth the effort, especially in a rapidly growing legal cannabis industry.
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Author: Alison Malsbury