To be registerable, a trademark must be capable of acting as a source identifier. Strong marks are distinctive, that is they are capable of readily identifying the source of a good or a service. Weak marks are not capable or do not easily identify a source of a good or service. Common terms like Grocery Store or Shoe Store are not very distinctive. They are used by many people to describe where they are shopping. By name alone, one does not know which Shoe Store or which Grocery Store they are going. If a mark is not distinctive enough to act as a source identifier, the United States Trademark Office may refuse to register the mark on the principal registry until the mark has sufficient recognition that it is capable of acting as a source identifier to consumers.
Within the trademark world, trademark distinctiveness varies over a range or spectrum. At one end of the spectrum are Weak Trademarks, marks which are unprotectable and at the other end are Strong Trademarks. Strong Marks which are very protectable. The more distinctive a trademark is, the easier it is to register and protect. Also, the higher up in the distinctiveness spectrum, the more protection that it receives under U.S. law. In order of weakest to strongest, marks are categorized as:
Generic Marks are unprotectable Photo Credit: Alexander Vega via Flickr cc.
Generic trademarks are not protectable. They are typically terms which are used to describe a product or service. For example, a brand of beer called “BEER” is generic. Generic trademarks are words which are used to describe the product or service and are often synonyms for the goods or services. For example, think about the terms Kleenex, Thermos, Xerox they each (at one time) were generic terms for what they were, tissues, insulated liquid containers and copies. Generic marks are not protectable because no one can own the exclusive right to describe a good or service.
Descriptive marks (or more properly, “merely descriptive marks”) are Weak Marks which describe the services or goods on which the mark is used. Descriptive Marks are difficult to register on the Principal Registry. One example of a descriptive mark is, Tire Store for a store which sells tires.
Some descriptive marks, while being weak, may be protectable. However, if the Trademark Office determines that a descriptive mark is merely descriptive registration may be refused. A merely descriptive mark is a very weak mark which does not identify the source of the goods or services. If a mark does not act as a source identifier, it cannot function as a trademark. Thus a merely descriptive mark can’t be protected as a trademark. Misdescriptive marks are equally weak.
However, if it appears that a descriptive marks can function as a source identifier, the trademark office may allow for the weak mark to be registered on the Supplemental Register instead of the Principal Register.
Over time, with extensive use and by building consumer recognition, descriptive marks can become distinctive by acquiring secondary meaning. Secondary meaning generally means that although the mark may be a description of a good or service, consumers recognize it as a brand which indicates the source of the product. By acquiring secondary meaning, the mark is no longer merely a description of the goods or services.
Secondary meaning can be shown through long term use, or extensive marketing activities including substantial advertising and publicity activities. In some cases, proof that the mark has acquired secondary meaning can be shown through the use of consumer surveys, that show that consumers recognize the mark as a brand as opposed to a description. If a mark has sufficient consumer recognition, the registrant can move the registration from the Supplemental Register to the Principal Register.
Suggestive marks are generally Strong Marks which are distinctive and protectable. Suggestive marks suggest a quality or characteristic of a good or service. For example, PAYLESS for a grocery store. The mark is suggestive because it suggests that you might pay less for items at a PAYLESS grocery store than you might at another store. Suggestive marks require some imagination, thought, or perception to reach a conclusion as to the nature of the goods. Suggestive marks are more distinctive than descriptive marks where a descriptive mark goes straight to the conclusion, CHEAP GROCERY STORE, and doesn’t require any thought or imagination.
Arbitrary or Fanciful Marks
Arbitrary and Distinctive Marks are strong marks in comparison to Descriptive ones. Photo Credit: Roberta Sorge on Unsplash
Arbitrary and Fanciful marks are very strong protectable marks and are considered very distinctive. They are at the opposite end of the spectrum from generic marks and are considered the most easily protectable of marks.
Fanciful marks are strong marks which are made up words and have been created for the sole purpose of identifying a brand. They typically have no meaning in dictionary and solely function as a trademark. Fanciful marks are considered to be the strongest type of mark. An example of a Fanciful Mark is EXXON or XEROX.
An arbitrary mark is a strong mark. Even though the word or phrase associated with an arbitrary mark is already known, as applied to the goods or services, it has no meaning or relation. Arbitrary marks are considered to be a very strong distinctive mark, just under Fanciful Marks. Examples of arbitrary marks include APPLE for music and computers.
Additional information about trademarks can be found on the trademark section of our website. If you have any questions about whether your mark is strong or protectable, please contact us to schedule an appointment with one of our attorneys.