Strength of Marks
A trademark or service mark will only be registered with the United States Patent and Trademark Office if it is distinctive. This means that a mark can be used to identify and distinguish the products or services to which it is attached from products or services of other providers. Distinctiveness of a particular mark is categorized in five ways from most distinctive to least distinctive:
- Fanciful Marks
- Arbitrary Marks
- Suggestive Marks
- Descriptive Marks
- Generic Terms
The strength of a mark is determined by which of these categories a mark falls into, and the strength determines how much protection the mark obtains. Marks that are considered “fanciful” are considered the strongest marks, and they are given the greatest protection. Marks that are considered “generic” are never given trademark protection.
If you want to obtain trademark protection, your best option is a fanciful mark. These are marks that have been invented solely to serve as a trademark, and they are the strongest marks. They have no other meaning other than their role as a mark. Some examples of fanciful marks are “Kodak” or “Pepsi.” These are usually words that are unknown in a language or are “neologisms,” or they are completely outside common usage.
Arbitrary marks also receive strong protection. These are words that are commonly used, but when used to identify and distinguish products or services, do not describe or suggest any quality or characteristic of the product or service to which they are attached. They are often words used in an uncommon way. For example, “Apple” when used to describe personal computers is arbitrary.
Suggestive marks are marks that require a member of the public to imagine or think to understand what the nature of products or services might be. This is different from a descriptive mark, which immediately tells a member of the public some characteristic of the goods or services.
Often the mark creates an incongruity to accomplish the suggestion. For example, “Frankwurst” places “Frank” and “wurst,” which both suggest wieners and sausages, next to each other, even though these synonyms are never placed together. Similarly, “Dri-Foot” is suggestive of antiperspirant or deodorant for the feet, but it requires mental work to figure out the connection. “Microsoft” suggests software, but it is not a literal description of it, which means it is suggestive.
Descriptive marks are those that clearly describe services or products to which the mark is applied. They can be difficult to distinguish from suggestive marks, but generally descriptive marks allow a member of the public to figure out the nature of the goods without any imagination or thought.
When a mark is only descriptive, it does not qualify for trademark protection. For example, “Light” has been found to be merely descriptive of a product’s weight when applied to portable computers. Descriptive marks can become descriptive, however, by obtaining a secondary meaning. For example, “Sharp” has developed a secondary meaning in connection with its use on the television brand.
Generic marks are terms that name a product and cannot be used as trademarks under the reasoning that no manufacturer or service provider should have the exclusive right to use words that generically identify a product. For example, “email” would be a generic mark. Trademarks that would otherwise be valid can become generic if the public misuses the mark to identify a type of good or service rather than distinguish the owner’s goods or services. “Xerox” was a mark that was headed towards becoming a generic name for copies, but Xerox used advertising to prevent the public from misusing the mark.