A trademark is a word, phrase, symbol, design, or combination of these elements that identifies and distinguishes the source of your goods or services from those of others. A trademark can be a valuable asset for your business, as it can help you build brand recognition, customer loyalty, and goodwill in the market.
However, not all trademarks are created equal. Some trademarks are stronger and more protectable than others. The strength and protectability of your trademark depend largely on how distinctive it is. Distinctiveness is the ability of your trademark to identify your goods or services as coming from a single source and not being confused with other marks.
The United States Patent and Trademark Office (USPTO) uses a sliding scale to evaluate the distinctiveness of trademarks. On this scale, there are five levels of distinctiveness: generic, descriptive, suggestive, arbitrary, and fanciful. The higher your trademark is on the scale, the stronger and more protectable it is.
Generic trademarks are the weakest and least protectable type of trademarks. They are not even trademarks in the legal sense, as they are merely the common or generic name for your goods or services. For example, “apple” for apples or “book” for books are generic terms that cannot function as trademarks.
Generic trademarks cannot be registered with the USPTO on the Principal Register, which is the main register for federal trademark protection. They also cannot acquire distinctiveness through use or promotion, as they do not indicate source or origin. Generic trademarks are free for anyone to use in connection with the relevant goods or services.
Descriptive trademarks are slightly stronger than generic trademarks, but still weak and difficult to protect. They are terms that describe some aspect of your goods or services, such as their quality, feature, function, purpose, ingredient, geographic origin, or intended user. For example, “Hot-N-Ready” or “Kentucky Fried Chicken” for restaurant services.
Descriptive trademarks cannot be registered with the USPTO on the Principal Register unless they have acquired distinctiveness through use in commerce over many years. This means that consumers have come to recognize and associate the mark with your goods or services as a source indicator. This is also known as secondary meaning.
To claim acquired distinctiveness under Section 2(f) of the Trademark Act, you must submit evidence that shows consumer recognition of your mark as a trademark for your goods or services. This can include advertising and promotional materials, sales figures, consumer surveys, declarations from dealers or customers, or other relevant evidence.
Suggestive trademarks are stronger and more protectable than descriptive trademarks. They are terms that suggest some quality or characteristic of your goods or services without directly describing them. They require some imagination or mental leap to connect the mark with the goods or services. For example, “Coppertone” for sun-tanning products or “Netflix” for an online service to watch movies and shows.
Suggestive trademarks are inherently distinctive and do not need to prove acquired distinctiveness to be registered with the USPTO on the Principal Register. They are generally considered creative or unique marks that set you apart from your competitors.
Arbitrary trademarks are even stronger and more protectable than suggestive trademarks. They are terms that have a common meaning but have no logical connection or relation to your goods or services. They are usually words that exist in the dictionary but are used in an unexpected way. For example, “apple” for computers or “camel” for cigarettes are arbitrary terms.
Arbitrary trademarks are inherently distinctive and do not need to prove acquired distinctiveness to be registered with the USPTO on the Principal Register. They are typically considered very strong marks that clearly identify you as the source of your goods or services.
Fanciful trademarks are the strongest and most protectable type of trademarks. They are terms that have no meaning other than as a trademark for your goods or services. They are usually invented words that only have meaning in relation to your goods or services. For example, “xerox” for printers or “pepsi” for soft drinks are fanciful terms.
Fanciful trademarks are inherently distinctive and do not need to prove acquired distinctiveness to be registered with the USPTO on the Principal Register. They are generally considered the best marks that have the highest level of protection against infringement and dilution.
How to Choose a Distinctive Trademark Name
As you can see, the distinctiveness of your trademark name is crucial for its registration and protection. Therefore, when choosing a trademark name for your goods or services, you should aim for a name that is as distinctive as possible. Here are some tips to help you choose a distinctive trademark name:
Avoid generic or descriptive terms that merely describe your goods or services or their features. These terms are weak and hard to protect, and may also limit your ability to expand your product line or service offerings in the future.
Consider suggestive, arbitrary, or fanciful terms that create a positive impression or association with your goods or services without directly describing them. These terms are strong and easy to protect, and may also help you stand out from your competitors and attract customers’ attention.
Conduct a thorough trademark search to make sure your chosen name is not already in use by someone else in connection with similar goods or services. You can use online databases such as the USPTO’s Trademark Electronic Search System (TESS) or third-party services to conduct a preliminary search. However, it is always advisable to consult a trademark attorney to conduct a comprehensive search and analysis before filing a trademark application.
Test your chosen name with your target audience and get feedback on how they perceive and remember it. You can use online tools such as SurveyMonkey or Google Forms to create surveys or polls and ask questions such as: What do you think this name means? What do you think this name sells? How do you pronounce this name? How do you spell this name? How likely are you to buy this product or service based on this name?
Choosing a distinctive trademark name is one of the most important decisions you can make for your business. A distinctive trademark name can help you build a strong brand identity, increase customer loyalty, and prevent confusion or competition in the market. However, choosing a distinctive trademark name is not always easy. You need to consider various factors such as the nature of your goods or services, the preferences of your customers, the availability of the name, and the legal requirements for registration and protection. Therefore, it is wise to seek professional guidance from a trademark attorney who can help you choose and protect a distinctive trademark name that suits your business needs and goals.
If you have additional questions or you are ready to file your trademark, contact us today.