This post will help guide you, a marketing professional or startup, in the development of a word(s) that will one day embody your client’s/company’s reputation to its target market. Legally speaking, some trademarks are stronger than others based purely on the word itself, and this post gets into what makes a certain word stronger or weaker in terms of trademark law. “Strong” words are given stronger protection, that is, protection over both a wider range of visual/aural variations as well as a wider range of related products/services.
Courts and the USPTO assess the strength of a trademark in terms of conceptual and commercial strength, the “two-prong” test:
Conceptual strength: This will be discussed in a future blog!
Commercial strength: the actual customer recognition at a point in time, usually at the time of registration or litigation.
A “crowded marketplace” will have an effect on the commercial strength of a trademark, and is directly related to how wide the scope of protection of a trademark is. A trademark which is, despite being distinctive in a general sense, may be considered weak where there are many trademarks within an industry or related industries with similar names. As a hypothetical example, first imagine a fitness tracker app which has a conceptually strong name: BUDDY AND BOD. Memorable right? It’s simple, to the point, suggestive about the product, and a Google search for that exact phrase turns up only a single result!
Now, let’s suppose that there are 10 fitness tracker app companies in the US, and 8 of those companies had the word BUDDY in their name. Quickly scanning through this list to find the brands BUDDY AND BOD and TOTSFIT, I think you’ll find that one of these two pops out more noticeably:
- FIT BUDDY
- HEALTHY BUDDY
- WORKOUT BUDDY
- LEAN MEAN BUDDY
- BUDDY AND BOD
- EVER BUDDY BETTER BODY
Do you feel that BUDDY AND BOD has a stronger mark than, let’s say TOTSFIT, in this market? Probably not. Taking this example, if you’re developing the 10th fitness tracker app in the U.S. and you have a name with the word BUDDY in it, not only are you are competing with all the other BUDDY-formative names, but you will have a difficult time enforcing your rights against any subsequent app-developers with a BUDDY in their name.
This would likely be considered a crowded market, and any trademark for a fitness tracker app containing the word BUDDY will have a weaker scope of protection than say, a very unusual, made-up term like TOTSFIT.
To illustrate how this might play out in a trademark infringement setting, I think TOTSFIT would be able to convince the USPTO or a court that the public may confuse the following with their own TOTSFIT: TOTFITFULLY, TOTSMITH, DOSEBIT, USFIT, and DOTSIT. Meanwhile, BUDDY AND BOD would probably have a more difficult task in convincing a court that customers would be confused by a competitor’s use of the brands BODY MIND BUDDY, BODYBUDDY, BUDDY AND SOUL, even though these are somewhat similar to their own BUDDY AND BOD.
The takeaway: developing a clever name for your brand is only a first step. The second step is to make sure that other competitors aren’t commonly using a part of your clever name. The third step, not discussed here, is having your proposed brand thoroughly cleared by a trademark lawyer trained in clearing brands before applying for trademark protection.