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Trademark Myth #8: Anything can be trademarked

Companies often believe they can use any word or design as a trademark. This is partially true — one could use anything for a trademark. However, it’s a myth that all trademarks get equal protection. Trademark lawyers classify marks into “strong trademarks” and “weak trademarks.” We think about protection and registration. A strong trademark is “fanciful” or “arbitrary and capricious” in connection with the particular goods or services. For example, lululemon is a made-up word with no meaning in the English dictionary. This makes it “fanciful.” Same with Starbucks. The word Apple is well-defined for those delicious crisp fruits we eat, that keep the doctor away, but it lacks meaning in connection with computers. This makes Apple a strong trademark for computer, electronic goods, and technology.

In contrast to strong trademarks, a weak trademark is “merely descriptive” in connection with the goods or services. Weak trademarks may require fewer marketing dollars to connect the good or service with the mark in consumers’ minds. Sadly, weak trademarks also will not result in any protection for the owner. For instance, I would never be able to get a trademark registration for “tennis ball” for that little yellow thing I swing at. Not only is it descriptive, but a lot of brands already sell tennis balls. We call this situation a “crowded field.”

Owners may need to invest more time and effort making consumers associate a strong trademark with particular goods and services. But, from a legal perspective, the weirder the mark, the better.


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