Understanding Trademark Strength

Publication Type: 
Academic Writing
Publication Date: 
July 7, 2013

Trademark strength, properly understood, refers to the scope of protection afforded a trademark by courts based on that mark’s inherent and acquired: (1) tendency to signify to consumers a consistent source of the products to which the mark is affixed; and (2) ability to influence a consumer’s purchasing decisions. The stronger the mark, the more uses the mark’s owner may exclude from the marketplace through a trademark infringement or dilution action. We argue that the acquired strength prong is insufficiently theorized and lacking in analytical rigor, which results in inconsistent results as judges in each jurisdiction (and indeed, each judge within a jurisdiction) rely on their own peculiar heuristics for determining whether a trademark is strong or weak. Our goal in this Article is to develop a better understanding of what is at stake when judges and practitioners think about trademark strength and to provide analytical guideposts that judges and practitioners can use to improve outcomes. By describing mark strength in a more articulate, consistent manner we can work towards eliminating inconsistency across circuits, thereby promoting more uniform national application of the Lanham Act. And by predicting accurately how strong a court will hold a mark to be in litigation, practitioners and markholders can better calculate the risk of bringing suit against an alleged infringer (or diluter).