Worried your trademark might be commercially and conceptually weak? Recent opinions by the trademark trial and appeal board indicate that could be advantageous.

As any marketing expert will tell you, the best trademarks are both creative and unique. Such “strong” trademarks are more memorable and set a product apart from competitors’ products. The strongest marks fall on the spectrum of “arbitrary,” “fanciful,” or “suggestive.” An arbitrary mark is an invented word created specifically to market some product, for example, when the made-up word EXXON is used for petroleum products. A fanciful mark is an actual word that has no association with the underlying product, for example, when the word APPLE is used for computers and phones. A suggestive mark suggests some quality of the underlying product without stating that quality directly, for example, when the word COPPERTONE is used for sun-tanning products.

Conversely, “weak” marks do a poor job of distinguishing a product or service from competitors’ products. Weak marks are either “descriptive” or “generic.” A descriptive mark immediately gives a consumer an idea about the underlying product, for example, when the word CREAMY is used for yogurt. A generic mark isn’t much of a mark at all but rather the common everyday name for a product, for example, when the word BICYCLE is used for bicycles.

However, in two recent appeals before the Trademark Trial and Appeal Board (TTAB), applicants for marks took advantage of their respective marks’ commercial and conceptual weakness to reverse refusals issued by trademark examiners. In the first case, In re Boyd Gaming Corporation, Ser. No. 97838771 (May 14, 2025), the TTAB considered the mark STADIUM SPORTS BAR & GRILL, the registration of which had been refused because of a likelihood of confusion with the earlier-registered mark STADIUM EAT – DRINK – SPORTS – GAMES. After examining the other factors that go into the likelihood of confusion calculation (and in this case supported the examiner’s refusal), the TTAB turned to the relative weakness of the STADIUM component found in both marks as demonstrated by the number of third-party marks that included that word – STADIUM GRILL, STADIUM DELI, and the like. The TTAB concluded that STADIUM was a commercially weak term within the bar and restaurant industry. Next, the TTAB considered third-party uses of STADIUM in connection with restaurants and bars located in or near stadiums and reasoned that the use of the word STADIUM in that context evidenced its conceptual weakness. Thus, despite a showing of a likelihood of confusion on multiple other factors, the TTAB ultimately concluded that the commercial and conceptual weakness of the applicant’s mark was sufficient to distinguish it from the earlier-registered mark.

Similarly, in the second case, In re Restaurant Concept Management, LLC, Ser. Nos. 98051196 and 98051234 (August 15, 2025), the TTAB considered the mark SIDECAR SLIDER BAR, the registration of which had been refused because of a likelihood of confusion with earlier-registered marks SIDECAR and SIDECAR SOCIAL. As in Boyd Gaming, after examining the other factors that go into the likelihood of confusion calculation and which supported the examiner’s refusal, the TTAB turned to the relative weakness of the applicant’s mark. And as in Boyd Gaming, the TTAB considered third-party uses of the term SIDECAR as part of the names of restaurants, bars, and related services and reasoned that the plethora of similarly named businesses showed a strong degree of marketplace weakness for SIDECAR in connection with bar and restaurant services. And as in Boyd Gaming, the TTAB considered the use of SIDECAR, which referred to a particular alcoholic cocktail, and reasoned that the use of the term SIDECAR was conceptually weak in the context of restaurants and bars. Again, despite a showing of a likelihood of confusion on multiple factors, the TTAB ultimately concluded that the commercial and conceptual weakness of the applicant’s mark was sufficient to distinguish it from the earlier-registered marks.

The takeaway from these two cases? To be clear, all else being equal, a strong mark is always preferable to a weak mark when it comes to establishing marketplace identity, and a strong mark will always be easier to enforce against similar marks used on similar products and services. However, notwithstanding similarities tending to point to a likelihood of confusion, in a crowded marketplace, even a commercially and conceptually weak mark may be registerable.

Before Clark Hill attorneys file your trademark application, we will evaluate your proposed mark, both in terms of its strength and its similarity to prior-registered marks, and provide you with a candid recommendation on your best path to success.