Choosing a trademark isn’t as simple as picking a catchy name for your product or service. The strength of your trademark is a crucial factor in determining its value. Trademark registrations provide two primary benefits: 1) a trademark registration is an assurance that you and your company will not be prevented from continuous use of the brand, and 2) you can prevent others in the market from using the same or similar trademarks that you have registered. Trademark distinctiveness is the legal concept that determines how strong your trademark is in the eyes of the law. Understanding the different trademark strengths will help you choose a long-lasting brand identity that is not only great from a marketing and narrative perspective, but will be afforded all of the rights that the law allows, as well as provide broad and enforceable protection. Let’s break down the five types of trademark distinctiveness and explore why it matters to your business.
Trademark Distinctiveness: A Matter of Strength
When you file for trademark registration, the U.S. Patent and Trademark Office (USPTO) evaluates your mark based on numerous criteria. One of the primary questions is whether your trademark is distinctive. While #2 below can acquire distinctiveness, only 3, 4, and 5 are inherently distinctive. The more distinctive a trademark is, the more likely it is to be granted protection. The trademark distinctiveness spectrum spans from the weakest to the strongest marks, and it includes five categories: generic, descriptive, suggestive, arbitrary, and fanciful.
The strength of your trademark will directly influence your ability to stop others from using it, as well as your ability to defend it in a legal dispute. Here’s a deeper look at each category.
1) Generic Trademarks: The Weakest of Them All
Generic trademarks are essentially the opposite of distinctive. They are terms that simply describe the product or service you offer. A trademark that is considered generic has no legal protection because it cannot function as a unique identifier for your business. For example, trying to trademark the word “Computer” for a company selling computers would be rejected by the USPTO because it is a generic term for the goods you sell. “Apple” is also generic – for a fruit, and could never be a functional trademark, but it certainly could for a computer, which is an arbitrary association.
The issue with generic trademarks is that they fail to distinguish one product or service from another. As a result, if you use a generic term, other companies can freely use it as well. This is why it’s critical for businesses to avoid choosing terms that describe their products too plainly.
2) Descriptive Trademarks: Not Quite There Yet
Descriptive trademarks are a step up from generic marks, but they still don’t offer much protection. Descriptive marks directly describe a characteristic, quality, or function of the product or service they represent. For instance, “Tasty Treats” for a bakery would be a descriptive trademark because it tells consumers exactly what to expect from the business—tasty treats. However, descriptive marks are not automatically eligible for trademark protection on the Principal Register, but may receive a lower level of protection on the Supplemental Register, which, over time (usually 5 years), can be registered on the Principal Register by showing acquired distinctiveness. In some cases, a showing of acquired distinctiveness can be made to the United States Patent and Trademark Office during the application process. Other types of descriptive marks can include geographical locations and laudatory words.
In other words, a descriptive trademark can become stronger over time if the public begins to associate the mark with a specific source. However, relying on a descriptive term can be risky. Without substantial evidence of secondary meaning, you may face challenges in enforcing your trademark rights. This is why it’s often safer to opt for a more distinctive name. However, even though the law is clear, sometimes the marketing and branding considerations supersede the best legal decision. In one area, conference names are more important to provide information and a description about the industries that they cater to then to find the strongest legal trademark. This is one of the small handful of industries that are an exception.
3) Suggestive Trademarks: A Step in the Right Direction
Suggestive trademarks sit in the middle of the spectrum. These marks don’t directly describe a product or service but instead hint at some quality or characteristic of it. They require some imagination from the consumer to understand the connection. For example, one of my favorite suggestive trademarks is GREYHOUND. Imagine you do not know what the company is. You hear Greyhound, and to your mind comes a dog–a racing dog. A fast dog! But then you see the service provided – it’s a bus company – Oh – Greyhound, the transport company, is making the connection about one of their attributes: that they are fast. Once the connection is made, there is a connection in the mind, and the customer will remember both the trademark and the attribute addressed. These are my personal favorite trademarks.
Suggestive marks are typically more protectable than descriptive marks because they don’t immediately tell consumers what the product is. They leave room for creativity, which is why they are often favored in branding. While they may not be as strong as arbitrary or fanciful marks, they are still a significant improvement over generic or descriptive terms.
4) Arbitrary Trademarks: Meaningless, But Powerful
Arbitrary trademarks are those that have no inherent connection to the product or service they represent. In other words, they are existing words or symbols that have a meaning in the language but don’t describe the goods or services associated with the trademark. A great example is “Apple” for computers. The word “apple” doesn’t relate to technology or computers, so it is considered an arbitrary trademark.
Arbitrary marks enjoy a high level of protection because they are unique and not associated with anything specific in the marketplace. They are memorable and consumers don’t have to make any associations to understand what the brand represents. This makes arbitrary trademarks highly valuable in terms of brand identity and legal protection. The other side of the coin is that the customer needs to be educated to connect the goods/services that you provide to the trademark that is arbitrarily associated with those goods and services. This requires more investment into marketing, but provides a much stronger trademark and associated brand identity.
5) Fanciful Trademarks: Distinctive and Powerful—Just Like Arbitrary Marks
Fanciful trademarks are considered one of the highest levels of trademark strength and distinctiveness. These marks are entirely made-up terms that have no meaning outside of their use as a brand identifier. Think “Kodak” or “Exxon.” These trademarks are inherently distinctive because the words are not in the dictionary (in English, or in foreign languages) and were invented for the sole purpose of representing the brand. Fanciful marks are eligible for the highest level of legal protection because they are unique and not likely to be confused with other products or services.
Fanciful trademarks are also the easiest to defend in a trademark dispute. If you choose a fanciful mark, you are essentially starting with the strongest possible foundation for protecting your intellectual property. However, they can be more difficult to create, as you have to invent something entirely new that also resonates with consumers. Portmanteaus can also fall into the category of fanciful trademarks.
Why Trademark Distinctiveness Matters for Your Brand
Trademark distinctiveness plays a crucial role in your ability to protect your intellectual property. The stronger your trademark, the easier it will be to enforce your rights and stop others from using similar marks. If you invest in a trademark with strong distinctiveness from the start, you can avoid legal challenges down the line.
Choosing the right trademark type is part of building a brand that not only stands out but is also legally fortified. A strong trademark provides several advantages, including increased marketability, protection against infringement, and the ability to license or sell your trademark in the future.
At Gleam Law, we offer comprehensive intellectual property and trademark services to help businesses select and protect their trademarks. Whether you’re registering your first trademark or enforcing your rights against infringement, we’re here to guide you every step of the way.
Take Action: Protect Your Trademark Now
Trademark distinctiveness is key to building a brand that lasts. Whether you’re starting from scratch or revising your current branding strategy, understanding the different levels of distinctiveness will help you make smarter decisions. Don’t let weak trademarks expose you to unnecessary legal risks. Protect your intellectual property today by contacting our trademark lawyers for guidance on selecting and securing a trademark that best serves your business goals.