Selecting a Strong and Distinctive Trademark

One crucial part of ensuring that your chosen trademark is protectable (i.e., that you can prevent other people from using it without permission) and registrable is picking a mark that is strong and distinctive.

In picking a strong and distinctive mark, you need to understand the different kinds of marks and where they fall on the spectrum of distinctiveness, a classification of trademarks based on their inherent strength and protectability. Trademarks are categorized into five levels, on a spectrum from weakest to strongest:

Generic Marks

A generic mark is a term that has become so commonly associated with a particular product or service that it’s essentially the same as the product or service itself. In other words, it’s a word that people commonly use to refer to an entire category of products or services, and it’s not unique to any one brand.

Example: SHOE for a product that goes on and protects your feet.

Generic words cannot be protected or registered as trademarks. Trademarks should distinguish one brand from another; if a word is generic, it doesn’t serve that purpose.

Descriptive Marks

These marks describe a product or service’s feature, quality, or characteristic.

Example: QUALITY PLUMBING for plumbing services.

These are not the strongest marks, so they are not automatically protected or registrable.

A trademark’s primary function is to serve as a source identifier. When consumers see a trademark, they should immediately associate it with a specific source of goods or services. Descriptive marks do not perform this function well because they merely describe the product or service rather than distinguish it from others.

To overcome these limitations and make a descriptive mark eligible for trademark protection, you must demonstrate that it has acquired secondary meaning – i.e., that over time, through consistent and exclusive use, the mark has become associated with a particular source of goods or services in the minds of consumers, rather than just describing the product or service itself.

Suggestive Marks

These marks hint at (or suggest) a quality or feature of the product or service without actually or directly describing it.

Example: AIRBUS for airplanes.

Suggestive marks are generally entitled to protection, although potentially less extensive protection than marks that fall in the following two categories.

Arbitrary Marks

These are actual words, but when used to represent something unrelated, they are powerful and protectable trademarks.

Example: APPLE for computers.

Fanciful Marks

Fanciful marks are made up words, giving you maximum protection.

Example: EXXON

So, how do you choose a distinctive mark that’s both memorable and legally strong? That’s where we come in! Our attorneys can help you vet the trademarks you are considering so that you can ensure you pick the strongest one while also keeping an eye on your business needs.

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