Last updated on July 26th, 2018
Undoubtedly, the most important factor in choosing a legally strong trademark is choosing a mark that is distinctive. There are different levels of distinctiveness that have emerged in trademark law: generic, descriptive, suggestive, arbitrary, fanciful, and coined marks. The distinctiveness of your mark will determine how much work you will have to do to keep it legally protected.
Putting in the effort when first deciding on your trademark can help avoid problems in the future. A strong trademark will have a better chance of receiving stronger protections from the U.S. Patent and Trademark Office (USPTO). Also, choosing a strong trademark can help imprint your brand more prominently in the minds of consumers.
Step One: Understanding the Importance of Distinctiveness
There are several different general distinctions that can help you figure out the relative strength of your trademark. The stronger (more distinctive) your trademark actually is, the easier it will be to register with the USPTO and protect in the future.
Generic marks receive no protection under trademark law. A generic mark is a mark that reflects a product’s common name. For instance, you cannot claim a trademark for a cereal named “Cereal.”
You can compare this name to a brand like Cheerios. Because the Cheerios mark is more distinctive, it receives more protection from the USPTO.
Generally speaking, registering a generic mark is a bad idea that just wastes your application fee. In fact, becoming generic is usually a qualifier for brands to lose their trademark, as we’ll discuss later. Choosing a descriptive or suggestive mark is almost always a better choice.
Descriptive marks are not too far removed from generic marks. The main distinction is that descriptive marks use a synonym or add an adjective to the generic in hopes of differentiating itself.
For instance, take a look at Raisin Bran. What is the product? A breakfast cereal. How would you describe the product? A bran cereal with raisins. Have you ever noticed that the Raisin Bran from different companies is always simply called “[Company]’s Raisin Bran?” This is because Raisin Bran is too descriptive to properly trademark. Therefore, anyone can make a Raisin Bran cereal and market it as their own. Trademark law doesn’t apply in this case.
Generally, a descriptive mark will receive no protection unless it has acquired a secondary meaning in the market that is sufficient to make it distinctive. In the end, the name Raisin Bran is nothing more than a description of what the product actually is.
Descriptive Marks: Secondary Meaning
Even if your mark is merely descriptive, it can, over time, develop a “secondary meaning” in the market. This second meaning entitles it to very limited protections. For instance, International Business Machines may be considered descriptive, but over time IBM has certainly gained a unique enough brand in the field of computers to gain a secondary meaning.
If you are able to acquire secondary meaning, another company cannot use the name of your brand, or brand their products with that name. However, there is little to nothing that you could do to stop other companies from describing their products using your descriptive words in advertisements.
Descriptive Marks: Surnames
Keep in mind that surnames are also treated as descriptive marks. Therefore, they must obtain a secondary meaning in order to receive protections. Examples of this scenario include:
- McDonalds for restaurants
- Hilton for motels
- Chef Boyardee for canned pasta
Again, descriptive marks rarely receive much protection in trademark law because it is extremely difficult to make your mark acquire a “secondary meaning.” Only extremely large companies generally gain these protections.
Because the protection of trademark can turn out to be one of your business’s most valuable assets, you may want to head back to the drawing board if your mark is either generic or descriptive.
There are a few stronger types of marks that almost always receive higher levels of protection under trademark law.
Suggestive marks are automatically eligible for protection. However, they also sometimes cause legal debates because of how closely related they are to descriptive marks. The distinction between the two can be hard to see at first, but legally speaking there is a huge difference.
Again, a descriptive mark conveys an immediate idea of the ingredients, qualities, or characteristics of a good. A suggestive mark, on the other hand, requires imagination, thought, and perception to figure out. Without this quality, the mark would merely be descriptive.
Continuing with our cereal example, Froot Loops is a suggestive mark. Again ask yourself, what is the product? A breakfast cereal. How would you describe it? A colorful, ring-shaped, sweetened, puffed cereal made from corn, wheat, and oat flour.
Notice how the phrase Froot Loops doesn’t describe what the product is or does. Rather, it merely hints at certain characteristics of the product: the shape and color. The consumer must then make a logical inference to know the true nature of the goods associated with the mark.
Arbitrary marks receive a great deal of protection. They are marks composed of an already existing word that has no obvious relation to the product it represents.
The best modern example of an arbitrary mark is the company Apple. The Apple mark has absolutely nothing to do with the creation of computers or the selling of music, which makes it arbitrary.
Marketing a computer as “Apple” gives no description of what that particular computer actually does outside of the association between the word and the company itself. Because of this, another company that markets their computers as “Apple” would infringe on the mark.
Fanciful Marks/Coined Marks
Fanciful marks, also known as coined marks, are marks that are designed for the sole purpose of being a mark. The word alone carries no meaning on its own outside its use as a mark.
Famous examples include Kodak for pictures and Xerox for copiers. Any word that is “made up” for the sole purpose of making a trademark would count as fanciful.
Step Two: Choosing a Strong Mark
So how do you go about choosing a legally strong trademark?
First, you are going to want to brainstorm ideas. Some basic questions to ask yourself include:
- What do you want the mark to communicate to consumers?
- Do you want the mark to tell the consumer what the product is? Why they should buy it? Why they should trust it? Think suggestive or even descriptive.
- Do you want the mark to draw on some pathos from another word? Think arbitrary.
- Do you want the mark to distinguish you in the long scheme of things? Think fanciful.
- How will you use the mark in your marketing?
- Are you planning to use your mark in your domain name? If so, you may want to check on the availability before going all in on a mark. Domain names should be short and memorable. So should your mark.
- What level of protection do you want for your mark?
- This affects which trademark register you actually apply for.
- Is giving up some protection worth the advantages to marketing?
- It may be a smart play to risk using a descriptive mark if that will ensure better sales.
- Can you make the mark even more distinctive?
After you have made a list of ideas, you are going to want to do your research. Regardless of how distinctive your mark is, you must be sure that you will not be infringing on another business’s trademark. Not only could this be costly, but it could confuse consumers who may associate your mark with another company.
A good way to start your search is by simply googling to see what’s out there. Before going any further, you’ll probably want to perform a preliminary search to see if the mark (or one that is confusingly similar) is already registered in the federal database.
Step Three: Keeping a Strong Mark
Applying for and receiving a trademark is one hurdle. Actually keeping the mark, and strengthening it, is a whole different issue. Ensuring you protect and nurture your mark over time is where most of your money and effort will go.
Don’t Misuse Your Mark
You should always use your mark as an adjective, and never as a noun or a verb. Why? You might have noticed an example of this when we mentioned “googling” earlier.
You want to be sure that you keep your mark from becoming generic. A mark can become generic when the market begins to view the mark as a product or service’s common name. For example, making “google” into a verb weakens the mark as a whole. Over time, this can cause the mark to lose it’s legal protections.
Even a coined mark can become generic in time—consider the lengths Xerox has gone to avoid this fate. You can also check out these other well-known marks that have become generic. If your trademark becomes generic, your registration of the mark will be cancelled and others can begin to use the mark like any other generic term. This process is called “genericide,” because you are quite literally killing your trademark by using it improperly.
The easiest way to avoid genericide is to use your mark correctly. For example, your mark has a greater chance of becoming generic when it is used as a verb or a noun. “Google genericized trademarks” or “pass me a Kleenex” are incorrect uses of marks. Over time, this may cause consumers to associate the mark with the generic term—like using the word Kleenex for all facial tissues.
To avoid this fate, use your mark as an adjective if at all possible. Always avoid using it as a verb or noun:
- TRY: Keep your nose clean with Kleenex facial tissues.
- NOT: Keep your nose clean with Kleenex.
This not only allows consumers to understand what your product is or does, but it also prevents misuse of your mark in the future.
Use the TM or ® Symbol With Your mark
Both symbols are intended to put the world on notice that you claim rights to this trademark. If used consistently in your advertising, these symbols can also keep customers from confusing your mark for a generic term.
Wondering about which symbol to use? Find out here. As one general note, using the “Circle R” symbol without federally registering your trademark with the USPTO is a crime. Make sure you choose your symbols carefully in all your marketing materials.
Do Keep Your Trademark Registration Active
After you have federally registered your trademark, then the U.S. is on notice that you intend to claim all rights associated with this mark. However, your job isn’t over yet. The USPTO requires that you renew your trademark after 5 years of use, then every 10 after.
Otherwise, someone else may register for the mark while your status is considered “dead.”
Protect Your Mark
You don’t want your brand weakened by someone infringing upon your mark. Therefore, it’s important that you routinely search for possible violations and address them as soon as possible. Remember, USPTO does not automatically find cases of infringement on your mark. That’s your job as the owner of the mark.
For more information on policing your trademark and general information for maintaining your trademark, check out our tips for maintaining your trademark or speak with an experienced trademark attorney.
Choosing the right mark for your needs is the first step in creating a strong, successful, trustworthy brand. Following the steps above will put you well on your way to choosing a legally strong trademark.
If you find you are having trouble at any stage of the process, you should consider speaking with an experienced trademark attorney. The experience and knowledge of an attorney can help make the entire process easier, which can save you considerable money and heartache in the long run.