Choosing a Trademark – The Trademark Strength Spectrum

One of the most common encounters that trademark lawyers experience is when clients have an idea for a name that they want to “trademark” – only to have the client provide a proposed mark that is merely descriptive of the goods or services that the client wants to identify with the trademark.

While people like to choose descriptive marks in order to help consumers identify immediately their products and services (i.e., they somewhat describe the nature of the goods or services), these clients soon learn that the descriptive nature of such trademarks actually make them inherently poor trademarks because, absent a showing of acquired distinctiveness, a trademark owner cannot prevent others from using descriptive terms to describe such goods/services. When deciding on a trademark, it is important to keep in mind that the stronger the mark is, the greater scope of protection it will receive.

A trademark’s strength is classified along a spectrum of increasing inherent distinctiveness. From strongest to weakest, marks are classified as arbitrary or fanciful, suggestive, descriptive, and generic.

Fanciful marks comprise terms that have been invented for the sole purpose of functioning as a trademark or service mark – words that have no known meaning in the language (e.g., XEROX, KODAK, ZANTAC). Arbitrary marks comprise words that are in common linguistic use but, when used to identify particular goods or services, do not suggest or describe a significant ingredient, quality or characteristic of the goods or services (e.g., APPLE for computers; RAZOR for floor cleaning machines).

Suggestive marks are those that, when applied to the goods or services at issue, require imagination, thought or perception to reach a conclusion as to the nature of those goods or services (e.g., CRAZY GOOD for toaster pastries, REAL MASH for processed potatoes, CHOW for cooking magazine). In contrast, a descriptive mark is one which describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services (e.g., BRAIN GAMES for books and magazines containing games, FORMALDEHYDE-FREE for building insulation, VEGAS.COM for a website providing tourism information about Las Vegas).

The fine line between suggestive and descriptiveness is an important one because while suggestive marks can be registered by the U.S. Patent and Trademark Office (“PTO”) on the Principal Register, descriptive marks are refused registration on the Principal Register unless the applicant can show that the otherwise descriptive mark has acquired distinctiveness among the consuming public as a unique source identifier for applicant’s specific goods or services.

The rationale for the PTO’s unwillingness to refuse registration of descriptive marks is that trademark law does not want allow a mark owner to inhibit competition in the sale of goods and services by claiming an exclusive right to use a particular descriptive term in connection with such goods and services. By allowing a mark owner to claim exclusivity to a particular term, absent a showing that the term has come to be recognized by the public as identifying exclusively the mark owner, would allow such mark owner to deprive other competitors of the freedom to use such terms to advertise and describe their own goods and services.

Finally, generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services (BASKET for baskets, CLOTHING for clothing). These terms can never be claimed as trademarks regardless of how much evidence a mark owner can show regarding acquired distinctiveness.

So when deciding on a word, phrase, or slogan you wish to claim as a trademark in connection with your goods and services, it is important to keep in mind where the proposed mark falls along the spectrum of distinctiveness in order to assess the inherent strength of the mark against third party infringers. As much as you may want to use a mark that helps immediately identify the nature of your goods and services, you may ultimately be doing a disservice to your business’s ability to claim exclusive rights to use such mark in connection with your goods and services. While choosing an arbitrary and fanciful mark may require more of a marketing effort in order to have consumers associate the mark with your specific products and services, such mark will be afforded a broader scope of protection against third party infringers who market similar goods/services using a mark which is identical or confusingly similar to your arbitrary and fanciful mark.