Choosing a Trademark

The spectrum of trademark distinctiveness goes from fanciful marks, which are very protectable, to generic trademarks, which are not protectable. In trademark usage, words can be classified according to the degree of their distinctiveness. The right to protection of a trademark comes from its use to identify the product. When choosing a protectable trademark it should be highly distinctive. Choose trademarks that are fanciful, arbitrary, or suggestive because they are considered distinctive enough to function as trademarks.

A mark, such as a word or a logo, can only be considered a trademark or a service mark if it is distinctive. A distinctive mark is one that is capable of distinguishing the goods or services upon which it is used from the goods or services of others. A non-distinctive mark is one that merely describes or names a characteristic or quality of the goods or services. The distinctiveness of a mark can generally be categorized into one of five categories which fall along a spectrum of distinctiveness. The strength of a mark is determined in part by where it falls on this spectrum. Fanciful marks are considered stronger than suggestive marks, and therefore are granted greater protection by the courts. The categories, from most distinctive to least distinctive, are as follows:

1. Fanciful trademarks are marks which have been invented for the sole purpose of functioning as a trademark and have no other meaning than acting as a mark. Fanciful marks are considered to be the strongest type of mark. FAB is a shortened version for fabulous and is a fanciful word used for detergent. Other examples are Kodak, Starbucks, Verizon, Xerox and Reebok.

2. Arbitrary trademarks are common words used in a unique way so that the word has no relationship to the product. An arbitrary trademark neither suggests nor describes any ingredient, quality, or characteristic of a product. Examples are Apple for computers, Amazon for an Internet site, and Blue Diamond for nuts.

3. Suggestive trademarks indirectly allude to a quality of a product. Suggestive marks conjure images of the associated products without directly describing them. Trademark protection may be afforded to suggestive terms that shed some light upon the qualities or characteristics of goods but which are not descriptive of such goods. Secondary meaning is not necessary for suggestive terms because they are not merely descriptive. Stronghold for threaded nails is suggestive of their superior holding power, 7-11 for a store that is open from 7 a.m. until 11 p.m., Jaguar for a fast car, Gleem for toothpaste, and Orange Crush for a soft drink.

4. Descriptive trademarks are those which describe to potential customers the characteristics, nature, qualities or ingredients of goods or services. These trademarks are often referred to as inherently “narrow” or “weak.” Through use and advertising such marks may attain ”secondary meaning,” or trademark significance, to the public. In the absence of secondary meaning or distinctiveness, descriptive trademarks have generally been denied trademark protection in the belief that the number of such appropriate terms is limited and that all merchants should equally be allowed to describe their own goods while competing for customers. Examples are Computerland for a computer store, Vision Center for an optics store, and Tender Vittles for cat food.

5. Generic trademarks are terms that describe a whole class of products. A generic word is one which is the language name for the product. There can be no trademark rights in a generic term. They remain in the public domain as a part of your language. Examples are Personal Computer for a personal computer and Butter for butter.

Trademarks are referred to as strong or weak because of the amount of use necessary to create protected rights. Words which are fanciful or arbitrary are distinctive almost from their first use, so they are considered strong and would be the best choice for a trademark. These terms take less effort, time, and money to protect. Suggestive words are also protected as trademarks when used distinctively for particular products. Fanciful, arbitrary, and suggestive marks are registrable on the Principal Register without proof of acquired distinctiveness. Words which are merely descriptive do not obtain protection solely from their use as a trademark. Descriptive words must first acquire distinctiveness from the effect of the owner’s efforts in the market place. This is what is called the development of secondary meaning, which is when, in the minds of the consuming public, the primary significance of a descriptive term that has been used as a trademark is not the product itself but the identification of it with a single source.

Secondary meaning is the term applied to the source-indicating significance of a mark as contrasted with its primary or language significance. Thus, Ivory has acquired a secondary meaning signifying a particular manufacturer’s soap, whereas its primary meaning is the substance of an elephant’s tusk. Factors typically considered in determining whether a mark has secondary meaning include (1) length and manner of use; (2) manner and extent of advertising and promotion; (3) sales volume; and (4) evidence that potential purchasers actually view the mark as indicating the product’s source, including consumer testimony and survey evidence.

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