Selecting a Strong Trademark

May 28, 2020 | Written By Nicole Gaither

federal trademark, Nicole Gaither 

The Five Types of Marks You Should Know About For Your Business or Product Name

What’s in a name? When selecting a name for your business or product, there are two important things to consider: (1) avoiding a likelihood of confusion with other similar products that are available and (2) choosing a strong mark.

A likelihood of confusion occurs when a mark is the same or similar to another mark that identifies similar or related goods or services.

As far as a strong mark… that depends on the type of mark it is. There are five categories of marks:

  1. Fanciful
  2. Arbitrary
  3. Suggestive
  4. Descriptive
  5. Generic

Fanciful and arbitrary marks are considered the strongest marks and will give you the strongest level of trademark protection. Suggestive and descriptive marks provide moderate protection. Generic marks cannot be registered (more on that later), so they offer no form of trademark protection. You want the strongest level of protection possible, so let’s look at the five types of marks in detail.

Fanciful or Arbitrary Marks

Arbitrary marks are real words that have no relationship to the good or service. Fanciful marks are made-up words. Both are the strongest types of marks and are given broad protection because it is highly unlikely that someone else would be using them to describe your particular course or program. For example, APPLE for computers is considered an arbitrary mark because apples have nothing to do with computers. Now if APPLE was used to describe a fruit product, it would be considered generic (possibly descriptive) and therefore weak.

Examples of fanciful marks: KODAK, GOOGLE, XEROX.

Suggestive Marks

Suggestive marks make you think of the qualities or attributes of a good or service. They do not actually describe the goods or services, but they merely “suggest” a feature or attribute and require some thought or imagination on the part of the consumer to connect to the goods or services. Think SNUGGLE for fabric softener, JAGUAR for an automobile, GREYHOUND for bus services. Suggestive marks are considered strong, but there are some stronger types.

Descriptive Marks

Descriptive marks use words that “merely” describe the good or service that you are offering. This is a mark that uses a feature of the good or service – the color, smell, ingredients, etc. For example, IMPROVE for a type of life coaching program would probably be deemed descriptive because it is a feature (hopefully) of the service or program. Same goes for RED DELICIOUS as used to describe apples. A mark that is descriptive can ONLY be registered if the mark as acquired “distinctiveness.” That means the mark must be well-known and used in commerce for at least five years. BEST BUY was successfully registered after it acquired distinctiveness. Because a descriptive mark is considered weak, it will require a good deal of time, effort, and money to police the mark’s use while working to gain distinctiveness.

Generic Marks

Generic marks use common, everyday words that everyone has the right to use. A generic mark will describe the particular good or services, or a class of the particular good or service. My favorite example of this is BREAKFAST BURRITO, filed in connection with “breakfast burritos.” Another example would be attempting to use the term SHOE for “footwear.” These are generic terms. If someone was permitted to use SHOE as a trademark, that would unfairly prevent others from using that term for the sale of footwear. Same goes for BREAKFAST BURRITO.

The type of mark you select for your business or product name can make an impact on the level of protection you get for it. If you need help with this, Parlatore Law Group is here to assist you in selecting a strong name and filing a federal trademark application to protect it.

Nicole Gaither is a Partner with Parlatore Law Group and practices in the fields of copyright and trademark prosecution, in addition to tax law. She has demonstrated experience in prosecuting domestic trademark and copyright applications, providing brand protection through trademark monitoring, reviews of refusals, responses to refusals and assessing potential marks for use and availability. For more about Ms. Gaither, click here.


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