This blog post is about protecting your cannabis business but is universally applicable to all businesses, especially those looking to protect their brand through trademark registration. Strong trademarks are less likely to be challenged because they are less likely to cause confusion with other existing brands and marks. The question now becomes, what makes a strong trademark? The USPTO has created 5 categories of marks that are used to evaluate the strength of a mark. We’ll go through each one of them below, from strongest to weakest:
1. Fanciful Marks
A fanciful mark is also called a coined mark and this is the strongest type of mark because of its inherent distinctiveness. These are marks that consist of a combination of letters that do not have meaning and are invented solely to serve as trademarks. The inherent distinctiveness of these marks means that larger advertising efforts are required to inform consumers about the relationship between the marks and the goods and services offered by the company. For this reason, these marks are granted the largest scope of protection against other trademark applicants and users. (Examples: Google; Verizon; Rolex; Pepsi; Kodak)
2. Arbitrary Marks
Similar to fanciful marks, arbitrary marks also require great efforts by companies to educate the public about the relationship between the marks and their goods and services. As such, these marks enjoy the next broadest scope of protection against third-party use. Arbitrary marks are real words that have meaning but are completely unrelated the goods and services associated with the mark. Examples of such marks are Apple for electronic goods, Shell for gasoline, and Camel for cigarettes.
3. Suggestive Marks
Suggestive marks are the final category of marks considered to be strong marks by the USPTO. These marks can be made of real or invented words, but the words suggest something about the goods and services offered by the company. The marks don’t obviously reveal the exact goods and services offered, but they hint at them. Because of the nature of these marks, less advertising is required to educate consumers and so these marks are granted slightly less protection that fanciful and arbitrary marks. Examples of suggestive marks include Timex for watches, Netflix for streaming services, and Microsoft for software products.
4. Descriptive Marks
These marks are considered weak by the USPTO. Descriptive marks simply use a word or a combination of words to describe the goods and services associated with the mark, or to describe a feature, function, or quality of the goods and services. Since these marks themselves provide consumers with an idea of the services associated with the mark, even less informational advertising is required and even less protection is granted by trademark laws. Examples of these marks are: British Airways and BestBuy.
5. Generic Marks
These are marks that do not receive trademark protection because they simply describe the products or services offered.
Keep these categories in mind when developing your cannabis brand and applying for a trademark. Good luck!