Omega Trademarks and a Lesson in Trademark Strength: These Omegas May Actually Raise Your Blood Pressure

Ryan Kaiser, Partner

August 24, 2012

2 Min Read
Omega Trademarks and a Lesson in Trademark Strength: These Omegas May Actually Raise Your Blood Pressure

The recent popularity of OMEGAs highlights an interesting lesson in trademark strength. To put things in perspective, since 2006, the U.S. Patent and Trademark Office (USPTO) has averaged over four (4) applications per month to register marks containing the term “OMEGA” in international class 005 (i.e., dietary supplements).

Over four a month for six years! 

This begs the question: Why are supplement manufacturers so enamored with the term “OMEGA”? And, with so many products called “OMEGA-this” or “OMEGA-that," how much value can an “OMEGA” trademark really have?

We start by examining what is conceptual strength in the first place. Conceptual strength refers to a mark’s distinctiveness--that is, its ability to function as a source-identifier. Trademarks generally are grouped into five categories of conceptual strength. From weakest to strongest here they are: generic, descriptive, suggestive, arbitrary, and fanciful. While the latter three are inherently distinctive, Generic terms can never serve as trademarks. Descriptive terms, however, are special and often misunderstood.    

Descriptive marks describe some aspect or characteristic of a product. The term “Honey-Baked Ham” is an example of a descriptive mark. Generally, a descriptive mark will receive no protection unless it develops “secondary meaning.”  Secondary meaning is achieved when consumers associate a word or phrase with the trademark owner’s product. The meaning is “secondary” because it is second to the word’s primary meaning.

For example, the primary meaning of the phrase “Honey-Baked Ham” is ham that is baked with honey. Ordinarily this would be a terrible trademark. However, the wonderful folks at the Honey Baked Ham Company successfully (and expensively) promoted their trademark (and spent great resources fighting off would-be infringers, I’d bet) to use the “Honey-Baked Ham” mark exclusively for many years. In that time, an otherwise descriptive phrase developed secondary meaning, and consumers now associate the term “Honey-Baked Ham” with the trademark’s owner. 

So what’s that got to do with OMEGAs? With an uptick in products containing OMEGAs came a deluge of “OMEGA” trademarks. The descriptive nature of the term OMEGA, and the sheer volume of OMEGA trademarks, drastically limits their conceptual strength. In fact, the USPTO has started (though not uniformly) requiring applicants of marks in class 005 to disclaim the term “OMEGA” as part of their marks entirely. 

So why choose a weak mark to begin with? Where the choice is deliberate, it generally has to do with cost. It costs less to market a product where the name has a built-in descriptor of that product’s features or benefits. However, if the product is going to be key long-term player in your product portfolio, it often makes more sense to invest in the promotion of a conceptually strong mark at the outset. While it may cost more in the short-term, doing so will cut down on your policing and enforcement costs over the long haul, and you’ll have a stronger mark that can stand the test of time. 

About the Author(s)

Ryan Kaiser

Partner, Amin Talati Wasserman

Ryan Kaiser specializes in the protection and enforcement of trademark rights for businesses of all sizes. His diverse trademark practice includes counseling clients on the selection of new marks, clearance searching, U.S. and international registration, licensing, portfolio strategy, anti-counterfeiting measures, enforcement, oppositions, and litigation. Ryan also assists clients with the protection, enforcement, and licensing of copyrights.

For nearly two decades, Ryan has represented clients in a variety of industries, including food and beverage, dietary supplements, cosmetics, pet food and treats, pharmaceuticals, medical devices, consumer products, musical instruments, computer software and hardware, online media, automotive products, publishing, education, and sporting goods. Startups, entrepreneurs, and early-stage food and beverage companies frequently engage Ryan to provide strategic counseling in intellectual property matters. Ryan also provides buy- and sell-side due diligence support related to the merger or acquisition of a company or its intellectual property.

When issues of trademark infringement arise, Ryan is the attorney clients want on their team. While he has significant experience resolving trademark disputes through negotiation, he also regularly litigates before federal district and appellate courts as well as the Trademark Trial and Appeal Board. Clients also turn to him when faced with domain name disputes, including Uniform Dispute Resolution Policy (UDRP) proceedings and lawsuits before courts in the U.S. and abroad.

Ryan is a sought after speaker on trademark and unfair competition issues and has served as Vice Chair of the Chicago Bar Association’s Food Law Committee.

When he is not busy protecting his clients” brands, Ryan enjoys traveling with his wife and children, learning (albeit, slowly) to play the guitar, and dabbling in ultrarunning.

Subscribe and receive the latest insights on the health and nutrition industry.
Join 37,000+ members. Yes, it's completely free.

You May Also Like