How to Choose a Strong Trademark?

As we discussed in our June 2024 blog post, a trademark can be any word, phrase, symbol, design, or a combination of these things (typically referred to as a “mark”) that identifies your goods or services. It can often be a symbol of a person’s or company’s identity, reputation, and value.  

The Trademark Spectrum of Distinctiveness

Although the “Spectrum of Distinctiveness” sounds menacing it is simply used to describe five categories a trademark could fall under. The categories from weakest to strongest are:

GENERIC • DESCRIPTIVE • SUGGESTIVE • FANCIFUL • ARBITRARY

Unacceptable Trademarks

The weaker categories of trademarks are Generic & Descriptive. They typically will not be federally registrable by the United States Patent & Trademark Office (USPTO). Marks that fall under those categories fail to be a sufficiently distinctive to distinguish themselves from competitors good or service from competitors. Thus, making the trademark hard to protect against competitors.

Generic Marks

A generic mark can be a generic word or phrase that reflects a common everyday name that is inherently descriptive of a good or service. Generic marks are incapable of ever functioning as a trademark. Examples of a generic mark:

• Using the word “clock” or a picture of a clock for a timepiece store

• Using the word “hotdog” or a picture of a hotdog for a hotdog stand

• Using the word “light” or a picture of a light for a store that sells light fixtures.

Descriptive Marks

A descriptive mark is when you use words that describe some aspect of your good or services. But you fail to identify and/or distinguish your good or services from other providers that offer the same good or services. What is an aspect of a good or service? It could be an ingredient, quality, feature, purpose, characteristic, or use of the good or service. Laudatory terms, geographic designations, and surnames are also considered descriptive marks. Examples of generic descriptive marks could be:

• “Ticking” for a timepiece store

• “All beef” for a hotdog stand

• “Bright” for a light fixture store

• “Creamy” for yogurt

• “Bed & breakfast registry” for lodging reservation services

• “Best” or “Premier” would be considered a laudatory term

• “Los Angeles Pizza” would be considered geographically descriptive

In general, descriptive marks do not qualify to be federally registrable with the USPTO. But descriptive marks may qualify to become a trademark if the wording acquires distinctiveness over time through use and promotion resulting in customers associating the mark with a certain good or services. This concept of acquired distinctiveness is also known as “secondary meaning.” Secondary meaning refers to the mental association that consumers make between a mark and a particular source, indicating that the mark has come to signify a single producer or source.  Here is a great example. 

• A cola drink made using ingredients from the coca plant named Coca-Cola would not qualify to be registered as a trademark.  But because the name “Coca-Cola” acquired distinctiveness over time through use and promotion, the mark became closely associated with a specific brand of beverage.

Acceptable Trademarks

Suggestive Marks

A suggestive mark provides some hint or suggestion as to the product or service without actually describing the product or service. Often a customer will have to use their own imagination, thought, or perceptions to connect the mark to the good or services. It is difficult to predict whether wording will be considered suggestive or descriptive.

There are advantages and disadvantages to suggestive marks. On the upside they have a broader scope of protection than generic or descriptive marks. Also, suggestive marks often do not require as much marketing or education of the consumer as an arbitrary or fanciful mark. The downside is a suggestive mark is not as distinctive as an arbitrary or fanciful maker.  Thus, suggestive marks are weaker and harder to protect. This may result in a competitor using a similar trademark to indicate a similar good or service. Here are some examples of suggestive trademarks:

• A suntan lotion named “bronzer” would not qualify to be registered as a trademark.  But “Coppertone” is suggestive and distinctive enough to qualify as a trademark for sun-tanning products because the suntan lotion will make your skin shimmer like copper.

• “Airbus” is a suggestive mark for an airplane manufacturer.  However, another airline could also attempt to establish their own suggestive mark incorporating the word “air.”

• “Kitchenaid” is a suggestive mark for a kitchen appliance manufacturer.  However, another kitchen appliance manufacturer could also attempt to establish their own suggestive mark incorporating the word “kitchen.”

Arbitrary Marks

An arbitrary mark has a common meaning but is used in connection with goods or services that are completely unrelated to that inherent connotation. In other words, the actual words used as the mark has no association with the underlying goods or services. This often will require a company to educate the consumer to develop the association between the mark and the product or service. The category of arbitrary marks is inherently distinctive, are afforded a broad scope of protection thereby making them the second strongest type of mark. Great examples of arbitrary marks are “Apple” or Blackberry.” These words are commonly used to denote types of fruit. If a farmer or orchard tried to register these words as trademarks, they would be considered generic and most likely not registerable. However, these words have been registered as trademarks for computers and smart phones.

Fanciful Marks

Fanciful trademarks are invented words. They only have meaning in relation to their goods or services. For example, Exxon® for petroleum or Pepsi® for soft drinks.

A fanciful or coined mark is an invented word with no meaning outside of the meaning given to it by the company as a brand to identify their good or service. These marks can be combinations of portions of other words with no meaning or logic underlying them at all. These types of marks are inherently distinctive and therefore are typically the easiest to register and afforded the broadest scope of protection against third party use. Some examples include EXXON, PEPSI, and KODAK. Again, these types of marks will require a company to educate the consumer to develop the association between the mark and the product or service and to build brand recognition.

In our next blog we will discuss what is trade dress.

If you have any questions regarding trademark law or the federal process used to obtain a trademark, we would be happy to help.