Choosing a strong trademark is an important part of the branding process for startup companies and entrepreneurs. From a legal perspective, certain trademarks are stronger than others based on their uniqueness, descriptiveness, previous use, and relationship to the product or service that they represent. Generally speaking, trademarks fall into one of five categories of legal distinctiveness described below:
Fanciful Trademarks
Fanciful trademarks are the strongest type of trademark. A fanciful trademark is essentially a made up word or phrase with no specific meaning. The sole purpose of a fanciful trademark is to function as a trademark and to identify the goods or services that it represents. This type of trademark offers the most protection and is therefore the easiest to register with the USPTO. Fanciful marks are also the easiest to enforce since they’re coined terms that have no inherent meaning. Examples of fanciful trademarks include Google, Twitter, Starbucks, and New York-based Chobani.
Arbitrary Trademarks
An arbitrary trademark is the second strongest type of trademark. An arbitrary trademark is actually a real word, but has no meaningful relationship to the goods or services that it represents. The quintessential example of an arbitrary trademark is Apple for Computers. Another great New York example is Domino for sugar.
Suggestive Trademarks
A suggestive trademark suggests some connection to the underlying product or service and usually implies a feature of the product or service without directly stating it. This type of trademark is the weaker than the two previously mentioned categories, however, suggestive trademarks are still protectable and registerable with the USPTO. The classic example of a suggestive trademark is Coppertone for sun tan lotion. More recent examples of suggestive trademarks include Pinterest and Netflix.
Descriptive Trademarks
A descriptive trademark is the weakest type of trademark that is legally protectable. This type of trademark directly describes a feature or quality of the goods or services that the trademark represents, and does not require any thought or inference when connecting the trademark to the product or service (as is the case with suggestive trademarks). Descriptive marks are generally difficult to register, and may initially only qualify for registration on the USPTO’s Supplemental Register. If the trademark is consistently and substantially used over a long period of time, it’s possible for this type of trademark to acquire distinctiveness through use in commerce and eventually qualify for registration on the USPTO’s Principal Register.
Choosing a descriptive trademark is a common legal mistake. People often choose this type of trademark because they believe that the trademark’s obviousness will create an advantage from a marketing perspective, however the opposite tends to be true in my opinion. It’s important to keep in mind that the purpose of trademarking in the first place is to identify the source of the products or services, and without a distinct, non-descriptive trademark that’s difficult to achieve.
Generic Trademarks
Generic trademarks are common words or phrases that are incapable as functioning as a trademark, and are therefore not registerable. The USPTO will not allow applicants to monopolize a product or service category by allowing registration of common English words. Thus, Apple is a registerable trademark as applied to computers, but one could not trademark Apple as applied to fruits.
If you have questions regarding choosing a strong trademark feel free to contact us for a free phone consultation.