Different types of trademarks have different levels of strength. The strength of a trademark determines its ability to be protected from trademark infringers and enforced against bad actors. U.S. trademark law classifies trademarks on a spectrum of distinctiveness that ranges from strong, highly protectable trademarks to weak or unregistrable trademarks. There are five categories: coined (fanciful), arbitrary, suggestive, descriptive, and generic trademarks. Recognizing these categories of distinctiveness can be valuable to a company trying to create and protect its trademark rights.

The Trademark Strength Spectrum

Trademarks can be categorized based on their distinctiveness into one of five categories:

1. Coined (Fanciful) Marks – The Strongest Marks

• These marks are edited words with no meaning prior to use as a mark or no meaning other than its protected use.
• Example. “Kodak” for cameras, “Xerox” for copiers.
• Because the entire word is invented or coined, fanciful trademarks get the strongest protection under trademark law.

2. Arbitrary Marks – Strong and Highly Protectable

• Arbitrary marks use an existing word that has no logical connection to the goods or services.
• Example. “Apple” for computers, “Camel” for cigarettes.
• Arbitrary marks are considered inherently distinctive and get the strongest protection under trademark law.

3. Suggestive Marks – Strong and Indirectly Distinctive

• Suggestive marks allude to, hint at, the nature of the goods or services, but do not directly describe them.
• Example: “Netflix” (hinting that the service is based in the internet). “Coppertone” (which indicates a suntan product). These trademarks require the purchaser and/or consumer to make a leap of the imagination to establish a connection between the mark and the goods or services sold under that mark. Because of this connection, some marks are inherently distinctive and capable of being protected under trademark law.

4. Descriptive Trademarks – Weak Without Secondary Meaning

• Descriptive marks describe a characteristic, feature, or function of the good or service offered by the business.
• Examples of descriptive marks: “Sharp” in connection with televisions or “Cold and Creamy” in connection with ice cream.
• Descriptive marks are not inherently distinctive on their own, but with proof of secondary meaning, descriptive marks can acquire some protection by clearly establishing that consumers associate the descriptive term with a single brand or source.
• Further, descriptive marks will receive an office action rejection by the examiner, forcing the client to either accept it as descriptive and thus weaker, and often to amend to the supplemental registry, or in some cases, you can argue that the mark is not descriptive.

5. Generic Terms – No Trademark Protection

• Generic terms are common, everyday terms used by consumers to name the product or service itself.
• Examples of generic terms: “Aspirin” in connection with relief of pain or “Computer” in connection with computers.
• Generic terms cannot be trademarked because they need to remain available for all to use the product or service. But generic words can be included within a trademark phrase, for example, the word Bakery in “Sunny Bakery”. Generic words are typically “disclaimed” from the trademark.
• However, some once famous or coined/fanciful trademarks can be generic (genercized) over time.  For example, the following were once trademarks that are now generic in the US in connection with the same goods or services: cellophane, escalator, yo-yo, dry ice, laundromat, aspirin, frisbee. Other trademarks have been challenged as generic but as of the time of this article, have maintained their trademarks such as: Kleenex, Jet Ski, Band-Aid, Photoshop, Jacuzzi.  See this New York Times article for an interesting history of this topic. 

The Importance of Trademark Strength

The trademark strength of a trademark plays a crucial role in the ability of that mark to be registered with the United States Patent and Trademark Office (USPTO) and enforced against infringers. Strong marks, such as fanciful, arbitrary, and suggestive marks, are inherently distinctive, and able to be afforded immediate protection without proving secondary meaning. Descriptive marks can acquire protection, but only if proof of secondary meaning has been acquired, and generic terms can never be afforded protection. Ultimately, a business owner should always be in pursuit of the strongest and most distinctive trademarks available to maximize and protect their brand, and minimize legal challenges.

Picking the Right Trademark for Your Business

When developing the trademark or suggested trademark, consider the following:

• Select fanciful, arbitrary, or suggestive marks for the strongest legal protection.
• Steer clear of descriptive marks unless you are ready to prove secondary meaning.
• In no case should you ever try to trademark a generic term; it will be denied.
• Most importantly, consult with trademark counsel and, of course, have them conduct a thorough comprehensive trademark search in advance of filing.

Understanding the strength continuum of trademarks assists businesses in making better branding choices. Stronger trademarks create stronger brand exposure, lower chances for infringement, and provide better long-term legal protection. If you have questions regarding trademark selection, registration, or enforcement, consult with an experienced intellectual property attorney.

Need Assistance with Trademark Protection? At Cohen IP Law Group, we offer trademark strategy, registration, and enforcement. Contact us today to protect your brand’s identity.