Examples of Legally Strong and Weak Trademarks
A trademark must possess certain characteristics and the law defines these attributes. The examples below will help explain the legal attributes needed for great trademark legal protection.
I express no opinion on the business value of these trademarks. However, trademark laws are generally designed to give greater legal support to unique marks and there is probably a connection between a legally strong trademark and a commercially useful trademark. In addition, unique marks and legally strong marks generally score better in terms of rememberabilty in potential customers’ minds. Here’s a PDF with the examples below displayed in a table.
ARBITRARY MARKS
High Level of Legal Protection
The best trademarks are arbitrary or capricious, meaning there is no connection between the word and any feature of the product or service. Some of these words are newly created (“coined”) or neologisms.
These trademarks have a high level of legal protection.
Mark – Wii
Product – Electronic gaming device
Reason – Has no meaning in connection with persona electronic games; stylized or invented word
Mark – Adobe
Product – Software
Reason – No connection between word and product/service
Mark – Vimeo
Product – Video sharing website
Reason – The trademark is an anagram for the word "movie." It's also a combination of the words "Video" and "me."
Mark – Billabong
Product – Surf, skate and snowboard clothing
Reason – Word has no connection to the product. “Billabong” is an Australian English word meaning a small lake, specifically an oxbow lake, a section of still water adjacent to a river, cut off by a change in the watercourse
Mark – Wiki______
Product – Web articles database
Reason – Hawaiian for “quick”
Mark – Radio Flyer
Product – Children’s toy wagons
Reason – These words have nothing to do with any features of the products. The company was created in the 1930’s when the owner observed that American was enamored of airplanes and radios
Mark – Blackberry
Product – Personal Digital Assistant
Reason – Has no meaning in connection with PDA’s
Mark – Starbucks
Product – Coffee
Reason – Has no meaning in connection with coffee. (It was derived from the character “Starbuck” in Moby Dick by Herman Melville; this name was chosen after the name “Pequod” (the whaling ship in the novel) was rejected.)
Mark – Firefox
Product – Internet web browser
Reason – This combination of fire and fox have no meaning
Mark – 2llama
Product – Technology company
Reason – Just a very arbitrary name
Mark – Oxygen
Product – In-Line Skates
Reason – It is an ordinary English word, but it is a good trademark when used on this product. It connotes a good thing- air and connotes fitness. It’s distinctive and useful because this mark not in use for competing products
Mark – Daisy
Product – BB Guns
Reason – Interesting disassociation between the product attributes and the (opposite) connotation from a dainty flower
Mark – Webvan
Product – Web-Based Home Delivery of Food Items
Reason – This unique combination of “web” and “van” describes some attribute of the firm’s service, yet it is still a unique trademark because it is a unique combination of words
Mark – TiVo
Product – TV Video Recorder
Reason – Good name, good logo
Mark – Exxon
Product – Gasoline
Reason – This word has no meaning expect for its use as a trademark. A computer program reportedly created this trademark
Mark – Quark
Product – Graphics Software
Reason – Capricious name; a sub-atomic molecular structure that is the building block of matter
Mark – Whirlpool
Product – Home Appliances
Reason – Describes a product attribute
Mark – Aer Void
Product – Vacuum containers
Reason – Name suggests product characteristic plus misspelling of “air”
Mark – Pixelgate
Product – Graphics design firm
Reason – Combination of stock-in-trade (pixels) and allusion to gateway to unnamed something (greater understanding of product or service?); unregistered
Mark – Tokelan
Product – Wine
Reason – Translated from Greek means “most beautiful” & Pronounced toke-ay-lawn
Mark – ACCO
Product – Office Products
Reason – Acronyms are ordinarily weaker trademarks, but this one is probably better than most acronyms
Mark – Callaway, Rawlings, Tommy Hilfiger, Louis Vuitton
Product – Retail brands
Reason – Personal names are good if they are distinctive in their product category.
Mark – Patagonia
Product – Outerwear
Reason – For their avid outdoor product users, a positive association with a very rugged place
Mark – Apple
Product – Electronics
Reason – This common English word has nothing to do with the product, thus securing a wide range of protection in this product category. If it is used properly, it can have high protection.
Mark – Seagate
Product – Electronics
Reason – In the English language, but has no association with a product attribute
Mark – Peak
Product – Antifreeze
Reason – This word could be used for any product or service. As long as you are the first to use it in your category you can be ok; contrarily, there are downsides to such ordinary English words if a competitor tries to misuse the competition’s trademark in their advertising
Mark – Navigant, Accenture (derivation: accent on the future)
Product – Consulting Services
Reason –Unique; combination of syllables of separate words; directional sounding
Mark – Bearing Point
Product – Consulting
Reason – Directional sounding, which is a good thing for a strategy management consulting firm. Putting these 2 common English words together creates a good trademark; this large, public consulting firm will create good rights by their continuing, national use of the mark
Mark – Bain, Sapient, Razorfish, Cosential, Wind2 (Software), Axium
Product – Services
Reason – Unique, invented trademarks. These trademarks have nothing to do with any attribute or “connection” with a value or concept of the services
Mark – Lyostat, Comil, Actonel, Zocor
Product – Pharmaceutical
Reason – Completely abstract, artificially-created names
Mark – Tower Records
Product – Music retailer
Reason – "Tower" has nothing to do with music and therefore it is considered “arbitrary”, which is good; “Records” will add no trademark protection because is it descriptive and generic
Mark – Rose
Product – Pest Control
Reason – Arbitrary, capricious use of an ordinary English word results in a protectable trademark
Mark – Ray-Ban
Product – Eyeglasses
Reason – Describes a feature of the product (descriptive), but a good trademark because of the unique combination of these two words
Mark – Wayfarers
Product – Eyeglasses (from Ray-Ban)
Reason – Glasses that make you an adventurous traveler
Mark – Gatorade
Product – Beverages
Reason – While “ade” is generic, combining it with the unexpected “gator” creates a good mark (the product was invented by a University of Florida professor/researcher)
Mark – Oreo
Product – Snack Food
Reason – Completely arbitrary mark; much better than, for example, “Nabisco Butter Cookies” or “Chocolate Wafer Sandwiches” (I made this up)
Mark – Freescale
Product – Semiconductors
Reason – Unique; good
Mark – Sun Rocket
Product – Voice over IP phone services
Reason – Completely arbitrary
Mark – Vonage
Product – Voice Over IP Phone Service
Reason – Invented word by joining two never-before-combined syllables
Mark – Kinko’s
Product – Media Reproduction
Reason – Has no meaning in English
Mark – Bon Ami
Product – Cleansers
Reason – Translates in English to “my good friend”
Mark – Axe
Product – Personal care products for men
Reason – Arbitrary, capricious use of an ordinary English word results in a protectable trademark
GOOD LEVEL OF PROTECTION
Suggestive Trademarks
These trademarks suggest a feature or benefit of the product, creating a positive association between the trademark and the product. Suggestive trademarks are good trademarks, but suggestive trademarks are not as strong as arbitrary or capricious trademarks.
Mark – Off!
Product – Insect Repellent
Reason – Keeps bugs “off” you
Mark – Minute Clinic
Product – CVS Pharmacy on-house medical services
Reason – An alliteration that conveys an important feature of the service- speed
Mark – Forerunner
Product – Automobiles
Reason – Double meaning- advanced thinking and “four” for four wheel drive
Mark – Propel
Product – Energy Drinks
Reason – Propels you forward
Mark – Aqua Velva
Product – Men’s cologne
Reason – Water + smooth
Mark – Cayenne
Product – Automobile model
Reason – Association between a pepper and a high performance automobile is excellent
Mark – Nautica
Product – Apparel
Reason – Association between a pepper and a high performance automobile is excellent Nautica Apparel Create a positive association for the product with sailing and the positive presumed demographics of people who sail (analogy: POLO)
Mark – La Playa
Product – Resorts
Reason – Translated from Spanish is “beach”; plus it contains the word “play” in English which has a positive connotation
Mark – Rhode Gear
Product – Bicycle Equipment
Reason – Play on the word “road”- a good connection for serious bikers
Mark – Lexus
Product – Luxury Automobiles
Reason – “Lex” close to the “lux” in luxury but otherwise meaningless and “us” sound creates connection with the “u” in “ury” (luxury)
Mark – Acura
Product – Automobiles
Reason – “Acur” connotes meaning of “accurate”- an important concept in a car and “a” unique end of word to differentiate it from any other trademark
Mark – Viagra
Product – Pharmaceutical
Reason – “Vi” from vitality is a positive association for this product
Mark – Rold Gold
Product – Pretzels
Reason – A capricious spelling of “Rolled” connoting the rolled pretzel and rhyming “gold” (an alliteration); alliterations are very positive trademarks because of the rhyming
Mark – Febreze
Product – Web-Based Fabric Softener
Reason – Positive association between product performance and word “breeze”; “breeze” is misspelled to create uniqueness
Mark – Webvan
Product – Home Delivery of Food Items
Reason – This unique combination of “web” and “van” describes some attribute of the firm’s service, yet it is still a unique trademark because it is a unique combination of words
Mark – Encore
Product – TV Programming
Reason – Has a positive connotation with the happy feeling in the audience which leads to an “encore”; probably also meant to have an association with the idea of replaying the movie in a TV broadcast format
Mark – Smithereen
Product – Pest Control
Reason – Borrows from the colloquialism “smash it to smithereens?
Mark – Visa
Product – Credit Card
Reason – The word conveys impression of the product gives you special access from an authoritative legal source (the government)
Mark – Nickelodeon
Product – Entertainment
Reason – A positive association between the antiquated juke box playing many songs and a broadcast entertainment company providing TV programming
Mark – Kalahari
Product – Indoor Water Park in the Wisconsin Dells
Reason – Exotic sounding like a sophisticated resort in a desirable vacation spot
Mark – Sub Zero
Product – Refrigerators
Reason – Connotes cold temperature
Mark – Baymont
Product – Hotel, Motel
Reason – Bay connoting water, mont connoting a common suffix in a town name
Mark – Klondike (with polar bear logo)
Product – Frozen ice cream bars
Reason – Association with cold weather area and frozen ice cream
Mark – Picasa
Product – Photo cataloging services and software
Reason – It is a combination of “pic” and a formative from “Picasso”.– brilliant (Google did not create this but purchased this brand name)
Mark – Lee Ann Rimes
Product – Singer
Reason – Her stage name; she misspelled “rhymes”, which has a connection with her vocation as a singer
Mark – WhiteSmoke
Product – Grammar-correcting software
Reason – Perhaps trademark owner intends a connection between “smoke” and changing meaning the smoke changes form and evaporates
Mark – CamelBak
Product – Water Bottles
Reason – Implies positive water holding capabilities of a camel
Mark – PopTarts
Product – Breakfast food
Reason – Implies it is a tart (a positive association significant pastry category not really earned given the lower quality of the product compared with a fresh-baked good) combined with “popping” from the toaster
Mark – Puffs
Product – Facial tissues
Reason – Connotes softness, a positive characteristic for this product
Mark – Tom-Tom
Product – GPS device
Reason – Connotes the communication from a tom-tom drum, a traditional form of communication among certain peoples
WEAK TRADEMARKS
These trademarks are not distinctive because they use common words from English or common words used for products or services in their industries:
Performance, National, Pro, Value, United and Premier
Plain words in common use in ordinary English langue use usually make weak trademarks. Because of their common, everyday use, the law will usually not allow these words to be used in commerce to exclusively describe one product or service or function as a trademark. And, if you don’t have exclusive use you will not have strong legal rights. This will make it harder to prevent a competitor from using your trademark and may allow your competitors to poach sales from you or pass themselves off as you.
Marks which contain a word or element that describes a feature or quality of the product are also poor trademarks. This is because this descriptive term by law should be allowed to be used by users of the product without the owner claiming exclusive rights in the term. However, there is a fine line between a descriptive mark which usually has limited legal protection and a suggestive mark which cleverly alludes to a feature of the product. As contrasted to a descriptive mark, the suggestive mark requires the product user to go through a two-step intellectual exercise before realizing the connection between the trademark term and the product feature.
OTHER TRADEMARK THOUGHTS
Your trademark and trade name (your company name (e.g., with the “Inc.”) can and should be two different words.
Do not include the generic product type in the trademark.
For example, the Stairmaster Company of stair-climbing exercise equipment has the product name in the trademark. Another example is Boston Chicken, which spent millions to re-name itself to Boston Market a short time after its launch. Now, when the owner wants to expand its product line, their trademark story is complicated.
Customers can be confused- do they have other products like free weights or elliptical equipment or just stair climbing exercise equipment? Can I only get chicken there?
Do not succumb to what is cool or trendy now. In 2 or 5 years, it may not be cool.
Do not use today’s business jargon in a trademark. “Re-engineering” or “paradigm” used to be cool, now these terms are not cool. Do not let your trademark become uncool or dated. A 2008 example? “DNA”.
The first job of any new mark is to be legally different enough from any pre-existing mark.
For mainstream, consumer products (laundry detergent, milk) especially, it is usually beneficially to use a societally-accepted, safe word association. This is especially true for company that sells in multiple countries.
The trademark should be rememberable.
If the product is important, it is beneficial to secure the identical domain name. Go to whois.sc. If the domain is identical to the full trademark, that is excellent but hard to do today.
Talk to us
If we can help you or you would just like to talk to us, please call our office or send us an e-mail. References are available upon request.
We wish you the best of luck with your business!
Cordially,
Charles B. Brown
Principal
(847) 784-1300
www.corplaw.com | charlie@corplaw.com
400 Central Avenue, Suite 150, Northfield, Illinois 60093
Charlie concentrates in IP (Intellectual Property) Law. Charlie has 37 years of experience as an accomplished attorney for businesses in diverse industries nationally and internationally, including as in-house counsel where he came to fully understand how to serve business clients best. He has served in leadership roles at the Chicago Bar Association and Association of Corporate Counsel and writes on IP topics.
He is active in North Shore civic affairs. He likes sailing, softball, platform tennis, old boys rugby, mountain climbing, and working on his 1967 Cutlass Supreme convertible with 206,000 miles.