How much legal protection is given to a trademark, and how easily you can prevent others from using your trademark without your permission, is directly related to its strength. Generally speaking, distinctive trademarks are more legally protectible than descriptive ones.
The stronger your trademark, the more likely it will be approved for registration by the United States Patent and Trademark Office (USPTO), and the easier it will be to enforce your right to its exclusive use against others. “Strong” means how likely a purchaser of your product will view your trademark as an indicator of the source for your products or services.
Here are the categories of trademarks from strongest to weakest:
- Coined or fanciful trademarks. These are made up terms that have no meaning other than as trademarks (i.e., they have no dictionary or other known meaning). Also, because coined or fanciful trademarks are creative and unusual, it’s less likely that others are using them. This makes successful registration more likely. Examples of coined or fanciful trademarks include Xerox, Exxon, and Kodak.
- Arbitrary trademarks. These can be actual words which have a meaning, but the meaning doesn’t describe the product or service, or a quality associated with the product or service. Examples of arbitrary trademarks are Apple for computers and Camel for cigarettes.
- Suggestive trademarks. These trademarks suggest a product or service quality or characteristic without actually describing it. Imagination, thought, or perception is required to make a connection between the trademark and the product or service. Examples of suggestive trademarks are Coppertone for suntan oil, Chicken of the Sea for tuna, and Sprint for mobile phones or mobile phone carriers.
- Descriptive trademarks. These trademarks are words that describe the products or services you’re selling and are not automatically eligible for trademark protection like the previous categories might be. However, they can become protectible over time if they “acquire distinctiveness” or take on a “secondary meaning” so they become known to consumers as indicators of the source of the products or services. Examples of descriptive trademarks which have acquired distinctiveness or taken on a secondary meaning over time include Sports Illustrated and TV Guide.
- Generic terms. This is simply the category in which the products or services fall, such as supermarket, computer store, or escalator. A generic term can never be protected as a trademark.
How Presentation Affects Trademark Strength
Beyond the intrinsic strength of a trademark based on its category, the look or presentation of a trademark may affect its strength. Between a word trademark and a design/logo trademark, which is a stylized version of the word trademark, a word trademark is often stronger. (This doesn’t necessarily apply to a unique design with no words, such as the McDonald’s golden arches or the Starbucks mermaid, which can be as strong as a word trademark, but which may take years and a significant financial investment for consumers to recognize.)
The Value of Arbitrary, Fanciful, or Suggestive Trademarks
If your business is working with a marketing professional, be aware that many marketers prefer descriptive trademarks that describe the product or service itself. From a marketing perspective, it’s easier to market a product or service if you don’t have to explain what the product or service is.
Remember that the purpose of a trademark is to identify the source or origin of your product or service, not to identify the product or service itself. So, stay away from generic or descriptive terms for your trademark and choose arbitrary, fanciful, or suggestive words or phrases instead. Although it may take more time and effort, it’s better to create this kind of trademark, which will be stronger and more protectible. The benefit of an arbitrary, fanciful, or suggestive trademark will be more long-term protection for your valuable brand and its goodwill.
How Becker Law LLC Can Help
At Becker Law LLC, we are committed to helping your business succeed. We can advise you on all aspects of intellectual property law, including registering trademarks. Contact us today or schedule an appointment for an on-demand consultation to learn more.