Trademark Distinctiveness & Strength
3 min read
Not all terms are treated equal.
Trademarks are not registerable on the Principal register unless they are distinctive. That means there needs to be some element of an applied for trademark that is either inherently distincitive or that has acquired distinctiveness based on extensive use.
Trademarks (or parts thereof) generally fall into five (5) categories. Each category is explained below. When evaluating what category a mark or term within a mark may fall in, it is necessary to also consider the goods/services with which the mark is used. That’s because a term may be categorized differently depending on the goods/services the term is used to identify.
Type | Details | Example |
|---|---|---|
Generic | A term that refers to the genus or common name by which a product or service is known. Generic terms are never protectable as trademarks. | CLOCK to sell clocks. WATER to sell bottled water. GROCERY for a grocery store. In each example the term identifies the product or service. |
Descriptive | A term that describes a product/service or an ingredient, quality, characteristic, function, feature, purpose or use. Descriptive terms typically need to be disclaimed unless you are able to claim that the term has acquired distinctiveness based on extensive use or sales. There are some terms that are so highly descriptive that they are incapable of acquiring distinctiveness. | SMOOTH for a hair conditioner. COLORFUL for paint sets. In each example the term describes the product. |
Suggestive | A suggestive term provides hints about the goods/services without actually describing them. Many times a mental leap is required to make the connection between the term and the goods/services. Suggestive marks are deemed inherently distinctive and registerable on the Principal register. While a suggestive term can become a very strong trademark based on extensive use, it is not as strong as an arbitrary or fanciful mark at the time it is first adopted. | NETFLIX for streaming video services. |
Arbitrary | An arbitrary term is one that has a definition and meaning but that meaning is totally unrelated to the goods/services offered under the mark. A term could be arbitrary with respect to some types of goods/services yet fall into a different (and possibly unprotectable) category with respect to other goods/services. Arbitrary terms are inherently distinctive and registerable on the Principal register. Arbitrary terms can serve as strong trademarks. | SUN for office desks. Note that if the same mark SUN was used for cosmetics or sunscreen, it would be highly descriptive of those products. |
Fanciful | A fanciful term is one that is made up or coined. Fanciful terms are inherently distinctive and registerable on the Principal register. Fanciful terms can serve as strong trademarks. | GOOGLE and ROLEX. |
Type | Details |
|---|---|
Generic | A term that refers to the genus or common name by which a product or service is known. Generic terms are never protectable as trademarks. Example CLOCK to sell clocks. WATER to sell bottled water. GROCERY for a grocery store. In each example the term identifies the product or service. |
Descriptive | A term that describes a product/service or an ingredient, quality, characteristic, function, feature, purpose or use. Descriptive terms typically need to be disclaimed unless you are able to claim that the term has acquired distinctiveness based on extensive use or sales. There are some terms that are so highly descriptive that they are incapable of acquiring distinctiveness. Example SMOOTH for a hair conditioner. COLORFUL for paint sets. In each example the term describes the product. |
Suggestive | A suggestive term provides hints about the goods/services without actually describing them. Many times a mental leap is required to make the connection between the term and the goods/services. Suggestive marks are deemed inherently distinctive and registerable on the Principal register. While a suggestive term can become a very strong trademark based on extensive use, it is not as strong as an arbitrary or fanciful mark at the time it is first adopted. Example NETFLIX for streaming video services. |
Arbitrary | An arbitrary term is one that has a definition and meaning but that meaning is totally unrelated to the goods/services offered under the mark. A term could be arbitrary with respect to some types of goods/services yet fall into a different (and possibly unprotectable) category with respect to other goods/services. Arbitrary terms are inherently distinctive and registerable on the Principal register. Arbitrary terms can serve as strong trademarks. Example SUN for office desks. Note that if the same mark SUN was used for cosmetics or sunscreen, it would be highly descriptive of those products. |
Fanciful | A fanciful term is one that is made up or coined. Fanciful terms are inherently distinctive and registerable on the Principal register. Fanciful terms can serve as strong trademarks. Example GOOGLE and ROLEX. |
Other types of marks that are not inherently distinctive:
- Primarily geographically descriptive
- Primarily merely a surname
