When analyzing the strength or weakness of a trademark, the focus of the analysis is on the “distinctiveness” of the mark. Distinctiveness refers to the unique attributes of the trademark that serves two purposes: (1) serves as a marker for the producer and (2) serves to differentiate between producers of the goods or services. As stated in our previous article the purpose of a trademark is to identify the producer of the goods/services in the marketplace. A highly distinctive mark is a strong mark as it uniquely identifies the producer of the goods/services. When a mark lacks distinctiveness, or is used by multiple parties in commerce, the mark is considered weak.
To evaluate the strength or weakness of your mark, ascertain where your mark falls on the spectrum below.
Generic Marks (No TM protection)
A generic mark is a commonly used word that describes or states the function of the service or good (e.g. using “CHAIRS” as a trademark to sell chairs). A generic mark is ineligible for trademark protection because it lacks the distinctive element necessary to identify the producer of the goods/services. In addition, registering a generic mark would restrict both the English language and competition (imagine not being able to use the word “Chair” to describe chairs for fear of trademark infringement!) Genericism is where all trademarks go to die because as soon as your trademark becomes generic, it can not longer function as a source identifier and therefore all protections are lost.
Common marks that have been “genericized” over time include FLIP PHONE (originally a trademark of Motorola), ESCALATOR (originally a trademark of the Otis Elevator Company), VIDEOTAPE (originally a trademark of Ampex Corp) and ASPIRIN (originally a trademark owned by Bayer, declared generic in the U.S.)
Descriptive Marks (No TM protection unless acquired secondary meaning)
Descriptive marks are marks that describe an ingredient, quality, characteristic, function, feature, purpose or use of the goods and services for which they are used. For example, ALL BRAN for cereal or HOLIDAY INN for hotels. In contrast to generic marks, these type of trademarks can only be registered but if and only if they acquire secondary meaning within the minds of the consumer. Secondary meaning is achieved through consistent use and advertisement of a trademark over a period of time such that with time consumers are able to readily identify the mark as being associated with a single producer.
Suggestive (Automatic TM protection)
Suggestive marks are marks that suggest or hint at a characteristic of product or service without actually describing an element or function of the good or service. These type of marks require the consumer to think and make a leap in their mind as to the nature of the goods which differentiates them from generic or descriptive marks. In essence, suggestive marks straddle a fine line between being distinctive and descriptive. These type of marks automatically acquire trademark protection and tend to be favored for advertising purposes for their ability to slightly inform the consumer about the nature of goods/service while at the same time keeping the consumer curious. In addition, suggestive marks are also the most used trademarks. Examples of suggestive marks include COPPERTONE for sunscreen, JAGUAR for cars, NETFLIX and AIRBNB for home rentals.
Arbitrary/Fanciful (Automatic TM Protection)
Arbitrary marks comprise of words that are commonly used but have no relationship or connection to the goods/services they are used for. For example, APPLE for computers or NIKE for shoes. Fanciful marks consist of made up words invented for the purpose of functioning as a trademark. Fanciful marks have no other meaning in the English language and exist only trademark purposes. Examples of fanciful marks include EXXON for gas and KODAK for cameras. Arbitrary and fanciful marks are the strongest type of trademarks because they are inherently distinctive and thus automatically qualify for trademark protection.
Choosing your trademark
Ideally when deciding on your trademark, you want to select a mark that is strong, meaning highly distinctive and able to stand out in the marketplace. Typically, the stronger a mark is, the easier it is to register the mark with the USPTO and the easier it is to protect and enforce the mark against third parties. If you have any questions about how to choose your trademark, please contact us.