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RISING WOMEN EXPERT
ADVICE...
What is the difference between a weak trademark
and a strong one?
Having been recently approached for advice by an individual that mistakenly
pursued a trademark contrived of both common words and a common term, made
me realize that a misinformed decision like this could quickly turn your
“big picture” into a foolish error in judgment -- causing you not only
unnecessary time and money trying to protect it but also resulting in your
reputation being mocked by those who actually did their homework before “trademarking”.
The reason we trademark is to protect a unique “brand” that we have
developed. You may be in the industry of retailing clothing however if your
line is custom designed and distinct, and your vision is to leverage it as a
“brand name” like “Ed Hardy”, then it is in your best interest to register
your trademark to prevent others from stealing your business identity.
Loosely coined as “rip-off” products, unethical “manufacturers” do exist and
will attempt to market their own line off the back of your branding efforts.
How many of us own a “Guuuci” wallet?
A strong trademark uses a term or words that are unique to common language
and are created through raw imagination such as “Pepsi” or “Google”. In
general legal terms, the strength of the mark is determined by two factors:
“(1) the degree to which it is inherently distinctive [also referred to as
Conceptual Strength]; and (2) the degree to which it is distinctive in the
marketplace [also referred to as Commercial Strength].”1
A weak trademark is one contrived of words or terms that are commonly used,
such as “in my opinion” or “visit my website”. Though a weak trademark can
actually be registered, its protection is narrower because it carries with
it a load of discrepancies. Are you prepared to sue everyone who uses “in my
opinion” within their spoken or written word? Who in their right state of
mind would want to warrant the grief attached to it!?
To alleviate making a blatantly shortsighted decision, I encourage you to
consult the experts in the trademark industry for advice before chasing your
“dream phrase”. Wouldn’t you rather be spending your time building your
brand as opposed to wasting your efforts protecting it?
If you are looking for business advice, our Rising Women experts are
here to help! I welcome you to email your questions to
experts@risingwomen.com
1. McGregor-Doniger Inc. v. Drizzle Inc., 599 F.2d 1126, 1130 (2d Cir.1979)
as quoted in Major League Baseball v. Sed Non Olet Denarius, 817 F.Supp.
1103 (S.D.N.Y., 1993). |
