A trademark is a word, phrase, symbol, or design that is used to identify and distinguish the goods or services of one party from those of others. A strong trademark is one that is distinctive and memorable, and that is not likely to be confused with other trademarks.

There are a few things to keep in mind when choosing a strong trademark:

• Distinctiveness: A strong trademark is distinctive, meaning that it is not descriptive of the goods or services that it is used to identify. Descriptive trademarks are weak and are more likely to be challenged by other businesses.
• Memorable: A strong trademark is memorable, meaning that it is easy for consumers to remember and recall. Memorable trademarks are more likely to be successful in building brand recognition and loyalty.
• Not Similar to Other Trademarks: A strong trademark is not similar to other trademarks that are already registered or in use. If your trademark is similar to another trademark, it may be considered confusingly similar and may not be registered.

Here are a few tips for choosing a strong trademark:

• Brainstorm: Brainstorm a list of potential trademarks. Think about words, phrases, symbols, and designs that are related to your business or products.
• Do a trademark search: Once you have a list of potential trademarks, contact a trademark attorney at WINTER LLP to make sure that your trademark is available for use. A simple Google Search or USPTO will NOT work! It is crucial that you perform this step to avoid wasting thousands of dollars applying for a trademark that is not available.
• Get help from a trademark attorney: If you are unsure whether a trademark is strong or if it is likely to be registered, you may want to get help from a trademark attorney. A trademark attorney can help you evaluate your trademark and can file a trademark application on your behalf.

Here are some examples of strong trademarks:

• Fanciful trademarks: These are trademarks that are completely made up words. They are the strongest type of trademark because they are inherently distinctive and do not describe the goods or services that they are used to identify. Examples of fanciful trademarks include:
  • Google
  • Kodak
  • Exxon
  • Polaroid
• Arbitrary trademarks: These are trademarks that are words that have a meaning in the dictionary, but are not typically used to describe the goods or services that they are used to identify. They are also strong trademarks because they are inherently distinctive. Examples of arbitrary trademarks include:
  • Apple
  • Kleenex
  • Band-Aid
  • Coke
• Suggestive trademarks: These are trademarks that suggest a characteristic or quality of the goods or services that they are used to identify. They are less strong than fanciful or arbitrary trademarks, but they can still be effective if they are distinctive. Examples of suggestive trademarks include:
  • Just do it (Nike)
  • Tastes good, feels good (Coca-Cola)
  • Breakfast of champions (Wheaties)
  • Head on, apply directly to the forehead (HeadOn)
• Descriptive trademarks: These are trademarks that describe the goods or services that they are used to identify. They are the weakest type of trademark because they are not inherently distinctive. However, descriptive trademarks can still be registered if they have acquired secondary meaning, which means that they have become associated with a particular brand and are known by consumers to indicate the source of the goods or services. Examples of descriptive trademarks include:
  • Cheaper by the dozen
  • All-natural
  • Free shipping
  • Guaranteed

It is important to note that the strength of a trademark can vary depending on the specific trademark and the goods or services that it is used to identify. For example, a fanciful trademark for a new type of toothpaste may be stronger than a descriptive trademark for a new type of car.

It is also important to note that the strength of a trademark can change over time. For example, a descriptive trademark may acquire secondary meaning and become a strong trademark if it is used for a long period of time and becomes associated with a particular brand.

If you are considering registering a trademark, it is important to choose a trademark that is strong and distinctive. A strong trademark will help you to build brand recognition and protect your business from trademark infringement.

Choosing a strong trademark is an important part of building a successful business. By following these tips, you can increase your chances of choosing a trademark that is distinctive, memorable, and not similar to other trademarks. Please contact an attorney at WINTER LLP if you have any questions about registering or applying for your trademark.

A likelihood of confusion refusal is a decision by the United States Patent and Trademark Office (USPTO) that a trademark application cannot be registered because it is likely to cause confusion with a previously registered trademark. The USPTO will refuse to register a trademark if it is likely to cause confusion with a registered trademark in one of the following ways:

• Confusion of source: Consumers may believe that the goods or services offered by the applicant are the same as, or affiliated with, the goods or services offered by the owner of the registered trademark.
• Confusion of sponsorship or endorsement: Consumers may believe that the applicant’s goods or services are sponsored or endorsed by the owner of the registered trademark.
• Confusion of quality: Consumers may believe that the applicant’s goods or services are of the same quality as, or superior to, the goods or services offered by the owner of the registered trademark.

The USPTO will consider a number of factors in determining whether a likelihood of confusion exists, including:

• The similarity of the marks
• The similarity of the goods or services
• The strength of the registered trademark
• The likelihood that consumers will purchase the applicant’s goods or services believing that they are the same as, or affiliated with, the goods or services offered by the owner of the registered trademark
• The likelihood that consumers will be confused about the quality of the applicant’s goods or services

If the USPTO refuses to register a trademark on the ground of likelihood of confusion, the applicant has the right to file an appeal with the Trademark Trial and Appeal Board (TTAB). The TTAB will review the decision of the USPTO and make a decision on whether to register the trademark.

If the TTAB also refuses to register the trademark, the applicant has the right to file an appeal with the United States Court of Appeals for the Federal Circuit. The Federal Circuit will review the decision of the TTAB and make a final decision on whether to register the trademark.

If you need help responding to the USPTO about a refusal based on the likelihood of confusion with another mark on your trademark application, please contact WINTER LLP today.