Trademark Goodwill: Why Is It Important?

Weak Marks Have Narrow Protection

But Being First Is Still Rewarded

Two factors affect the overall strength of a trademark: its inherent strength based on the nature of the mark itself  (its inherent potential) and its commercial strength, based on the marketplace recognition value of the mark (how much strength is acquired). See Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006); McCarthy on Trademarks and Unfair Competition § 11:83 (4th ed. 2011).


Weak marks are generally descriptive or suggestive or common words where the use of the mark (acquired commercial strength) has not or does not overcome the mark's intrinsic or inherent shortcomings. Weak marks are often accorded a narrower scope of protection.


Ordinary strength marks that are neither weak nor exceptionally strong are entitled to the same scope of protection as other registered marks of the same character, not to the broader protection which an exceptionally strong or famous mark would merit.


Strong marks or famous marks are given broader protection. Fame would play a dominant role in the likelihood-of-confusion analysis because famous marks enjoy a broad scope of protection. Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000); Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).


However, even a weak mark is entitled to protection against the registration of a very similar mark for closely related goods. See King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974) (likelihood of confusion is to be avoided as much between weak marks as between strong marks).

First to file isn’t just a patent issue. The first to file a trademark application has an advantage as well. It has been implicitly recognized that there is a policy of encouraging prompt registration of marks by rewarding those who first seek registration under the Lanham Act. Weiner King, Inc. v. Wiener King Corp., 615 F.2d 512 (CCPA 1980).


Why Goodwill Is Important

"American businesses depend heavily on trademark protection for their brand names and service identities . . . A trademark is often a company's most valuable asset. Consumers also rely on trademarks to help them decide among competing products and services.” (http://www.uspto.gov/news/pr/2007/07-46.jsp).


“Sometimes, a trademark is better known than the company itself.” Brookfield Communications v. West Coast Entertainment 174 F. 3d 1036 (9th Cir. 1999).


But sharing trademark goodwill between products or services or between trademarks depends on creating a consistent commercial impression; goodwill and acquired distinctiveness go hand in hand. Generally, marks with different commercial impressions do not share goodwill. See In re Parkway Machine Corp., 52 USPQ2d 1628 (TTAB 1999) ("The existence of applicant's other registrations covering different marks is largely irrelevant to the question of acquired distinctiveness of the instant mark."); see also In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001) ("A mark is the legal equivalent of another if it creates the same, continuing commercial impression such that the consumer would consider them both the same mark."). In re Franklin County Historical Society (TTAB 2012) (COSI too different in commercial impression to be useful to applicant in establishing acquired distinctiveness of "CENTER OF SCIENCE AND INDUSTRY.")


What is Trademark Goodwill?

   Goodwill is not easily defined, but it has been described as the "expectation that the old customers will resort to the old place."  It typically includes not only the likelihood that customers will return to the old place of business, but the competitive advantage of an established business. "Although the definition of goodwill has taken different forms over the years, the shorthand description of good-will as `the expectancy of continued patronage,' provides a useful label with which to identify the total of all the imponderable qualities that attract customers to [a] business." "Good will has been defined as `the value attributable to a going concern apart from its physical assets — the intangible worth of buyer momentum emanating from the reputation and integrity earned by the company.'" Coca-Cola North America v. Crawley Juice, Inc. (E.D.NY 2011).


Being able to brand a product or service with a strong name or symbol and being able to protect it with the symbol of U.S. Federal Trademark Registration -®- is a strong business tool. Registering your name first and being able to prevent someone else from registering your name as a federal trademark is easier than trying to reclaim your rights based on common law rights.


Purchasing decisions are continually influenced by trademarks by distinguishing products from one another and indicating a level of authenticity and quality about products and services. The International Trademark Association (INTA) in their Top Ten Reasons Why You Should Care About Trademarks calls a Trademark the Most Efficient Commercial Tool Ever Devised. A trademark is strong if it identifies a UNIQUE source for the product or service by not using terms that others have the right to use (like descriptive terms or common terms). A trademark’s uniqueness gives the owner the right to exclude others from using it! (Unlike descriptive words that anyone can use.)




Not Just Patents ® Legal Services provides a very economical package for USPTO Trademark Applications and protecting Trademark Registrations. See What to Expect from a Not Just Patents ® Trademark Attorney for more information on what steps we take to protect your rights and help you develop a strong trademark.


We suggest a Not Just Patents Five-Step Verification as part of a Plan for A Successful Trademark:

To Verify a potential trademark is strong, available to use, and ready to register, the process should be more than a direct hit federal search. To maximize the commercial strength and minimize the weaknesses of a trademark, we start with these steps:

1) Verify Inherent Strength,

2) Verify Right to Use,

3) Verify Right to Register,

 4) Verify the potential mark (as currently used) Functions As A Mark, and

5) Verify that the Goods and Services ID is both the correct and the maximum claim that are user can make and verify that the Goods and Services ID meets USPTO requirements before filing.

*We don’t stop here but this is a good start!


Our rates are very reasonable. We can provide each step individually or as a trademark registration package. Our fixed price per classification for the whole package may be less than what you might pay to another attorney or law firm just to answer a USPTO Office Action Refusal at an hourly rate. Many businesses that use Not Just Patents® Legal Services for a patent application also use us to register their trademarks because having a strategy that goes beyond a patent application makes good business sense. Many businesses that have used Not Just Patents® Legal Services to answer an Office Action for a refused trademark often also use Not Just Patents to proactively pursue other trademark protection as well.


If you have already received a refusal, we can provide a quick and economical Response to Office Action (ROA). If someone is using your trademark in a way that harms you, we may be able to stop them through an opposition or a cancellation proceeding. If you are being opposed or are threatened with cancellation, we may be able to help as well. Timing is very important for a bunch of reasons: Opposition times are very short, times to answer Petitions to Cancel are only 40 days from when the petitions are filed, times to answer Oppositions can be very short, and sitting on your rights in general can cause problems. Don’t delay calling. We can help.


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Common Law Trademarks  Trademark Goodwill  Abandoned Trademarks

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Verify a Trademark  Be First To File   How to Trademark Search

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Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

35 U.S.C. 103 Conditions for patentability; non-obvious subject matter.

Trademark Statistics    Business Name Cease and Desist Letters

How To Answer A Trademark Cease and Desist Letter

35 U.S.C. 282 Presumption of validity; defenses

Trademark Refusals    Does not Function as a Mark Refusals

37 CFR § 1.53 Application number, filing date, and completion of application

Acceptable Specimen       Supplemental Register  $199 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Filing Requirements for Patent Applications

Trademark Attorney for Overcoming Office Actions

Functional Trademarks   How to Trademark     Surname Refusal

List of U.S. Patent Classifications

Grounds for Opposition & Cancellation     Cease and Desist Letter

How Do U.S. Patent Classifications Work?

Valid/Invalid Use of Trademarks     Trademark Searching

Patent Statistics     Sample Patent, Trademark & Copyright Inventory Forms

Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion  DuPont Factors

Proximate Function

Color as Trade Dress  3D Marks as Trade Dress

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Register a Trademark-Step by Step   Trademark Fixer

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Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

What Does ‘Use in Commerce’ Mean?    SCAM Letters

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Typical Brand Name Refusals  What is a Family of Marks?

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TSDR Trademark Status and Document Retrieval

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Counterclaims and Affirmative Defenses

How to Respond to Office Actions

What is a Compact Patent Prosecution?

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Changes To Implement the First Inventor To File Provisions of the America Invents Act

What is the Difference between Principal & Supplemental Register? What If Someone Files An Opposition Against My Trademark?

Patent steps

How to Respond Office Actions  DIY Overcoming Descriptive Refusals

PCT Patent Application information

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Samples of Responses to Office Actions

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Broad Patents

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Making Amendments in Response to Office Actions

TTAB/TBMP Discovery Conferences & Stipulations

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Examples Office Action Responses More Examples

Trademark Incontestability  TTAB Manual (TBMP)

Trade Secrets

What are Dead or Abandoned Trademarks? Can I Use An Abandoned Trademark?  Can I Abandon a Trademark During An Opposition?

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Differences between TEAS and TEAS plus  Zombie Trademark

Chart of Patent vs. Trade Secret

What Does Published for Opposition Mean?

How to Keep A Trade Secret

Acquired Distinctiveness  2(f) or 2(f) in part Extension of Time to Oppose

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