Selecting a Trademark: Trademark Strength

Selecting a trademark is a creative and legally important process. There are many issues that must be factored into the trademark selection process. One of the most important factors is the strength of the trademark; this is significant because the protection of your trademark against future infringement will depend on how strong the courts will consider your trademark to be.

There are four general types of trademarks: fanciful/arbitrary, suggestive, descriptive, and generic (which are really not marks at all).

1. Fanciful or Arbitrary Marks

The most common definition of a “fanciful mark” is the mark or design that has been created for the sole purpose of functioning as a mark. These are basically words that are new or previously unknown to an average consumer. EXXON is an example of a fanciful mark.

An “arbitrary mark” is a normal word or design used in an uncommon way or context. For example, APPLE is an arbitrary mark for computer-maker.

Keep in mind that fanciful marks can also be designs, not only words. For example, the STAGECOACH design of Wells Fargo is fanciful design mark.

Fanciful and arbitrary marks are considered to be highly distinctive and strong. This means that the marks are highly protected by the U.S. laws against the infringement by competitors. In fact, this is the most protected category of trademarks.

2. Suggestive Marks

Suggestive marks are those marks which subtly suggest the qualities which are desirable in a product or service, but which do not literally describe attributes or qualities of the goods or services with which these marks are associated. For example, GREYHOUND suggest speed which is a desirable quality in bus transportation.

Suggestive marks is the second strongest category of trademarks after fanciful and arbitrary marks. It is still highly protected by U.S. law and can be a trademark as soon as it is used.

3. Descriptive Marks

Unlike suggestive marks, the descriptive marks describe (not merely suggest) the qualities of the products or services in connection with which they are used. A commonly-cited test for recognition of descriptive marks is whether the mark immediately conveys the idea, ingredients or characteristics of goods or services in connection with which the mark is used. For example, VISION CENTER for optical clinics or AUTO PAGE for automatic dialing service.

Descriptive marks constitute a much weaker category of trademarks. In fact, unless a descriptive mark acquires what is known as “secondary meaning” through some period of use, sales, or advertising, it may not be protectable at all.

4. Generic Marks

The generic mark is not really a mark, but merely a term which is or becomes the generic name for the product or service in connection with which it is used. It is basically a common name for a product (or service) produced (or offered) by many companies, such as: automobile or cat food. The courts also found that “urgent care” is a generic term for medical services and “cellophane” is a generic term for a clear plastic wrap.

Notice that some terms which were not originally generic may become so over some period of time. For example, “aspirin” became generic over time.

Conclusion

Generally, the more distinctive the mark is, the more protectable it is likely to be. Therefore, from a legal standpoint, the stronger marks are those that are original and unlikely to infringe the rights of others.

Sherayzen Law Office can help you select and research the trademark for your business, evaluate your mark’s strength and file trademark registration applications with the USPTO as well as relevant state authorities. Call (952) 500-8159 to discuss your trademark with an experienced trademark lawyer!