CHOOSING A TRADEMARK: MAKE IT DISTINCTIVE

A lot of consideration goes into choosing a trademark. Not only do you want to make the biggest impact coming out of the gate, but you also want to ensure that your brand is protected so that you may use it (and prevent others from using it) long into the future.


What is the most important factor in choosing a mark? Make it distinctive. The word “distinctive” can mean different things in different contexts, but “distinctive” in trademark law means that a consumer can identify your mark as the source of your and only your goods or services. At its core, trademark law is designed to prevent unfair competition by means of confusing your goods and services from those of your competitors. For example, when a consumer sees a Nike logo on a pair of running shoes, they know immediately the source of those shoes. The consumer relies on that source when evaluating the quality and nature of these goods. In fact, in Nike’s case, the connection of that goodwill has become so strong as to allow Nike to prevent others from using the same mark not only on running shoes but on most athletic wear in general.


So, how do you determine if your mark is “distinctive” enough to warrant protection? Trademarks are broken down into four categories ranging from the most distinctive (highly protected) to the least distinctive (not protected at all). Gauging the strength of a new trademark requires knowing where it falls on the spectrum of “distinctiveness”.


Fanciful Marks

Fanciful marks are words or phrases coined entirely to sell the goods or services. For instance, “KODAK”, EXXON”, and “VERIZON” are all examples of the made up words that fall under the category of “fanciful marks”. The uniqueness of these marks provides the highest level of trademark protection.


Arbitrary Marks

Arbitrary marks are words or phrases that have no definitive or descriptive relationship to the goods or services. For example, “APPLE” for computers, “DIAL” for soap, and “CAMEL” for cigarettes are all examples of arbitrary marks. They are highly distinctive because once a consumer associates these marks with a product, there is no confusing them with other brands. These marks also receive very strong trademark protection. Although they are not newly coined words (like fanciful marks), their repurposing of meaning makes them highly distinctive.

Suggestive Marks

Suggestive marks are those marks that are somewhat descriptive of the goods and services, but still require an extra step in the imagination of the consumer to understand what goods or services it describes. For instance, “ROACH MOTEL” describes a product having something to do with roaches, but because motels generally are not built for roaches, it requires some imagination on the part of the consumer to understand that both the mark “ROACH MOTEL” and the slogan “ROACHES CHECK IN, BUT THEY DON’T CHECK OUT” are for a roach killing product. In that sense, the distinctiveness comes from that extra step in making that connection. Suggestive marks receive distinctiveness protection under trademark law, but not quite as much as the gold standard fanciful and arbitrary marks.


Descriptive Marks

Descriptive marks are just what they sound like: words, phrases, or logos that describe your goods or services. In this case, the consumer needs no extra step in the imagination to guess what you sell. For example, “HONEY-BAKED HAM” for hams baked with honey and “YOUR CLOUD” for data storage both plainly describe the goods and services being offered. In general, descriptive marks are not eligible for trademark protection because you cannot claim exclusive rights to a mark without a unique connection to your goods or services. In some cases, however, a descriptive mark eventually can be treated as having “acquired descriptiveness” if you can show through advertising that your mark has earned a secondary meaning that makes consumers think of the producer rather than the product An example of a descriptive mark that later received protection through secondary meaning would be “SHARP” for televisions.

Generic Words

Generic words are never protectable under trademark law because they merely name the product or service being offered. Examples of such brands would be “COMPUTER SOLUTIONS” for computer services, “TEXAS TOAST” for croutons, and “TIRES, TIRES, TIRES” for, you guessed it, retail tire store services. Although a business is certainly free to use a generic word as a brand, it means sacrificing "protectability" of that brand and diluting it in the marketplace.


So which kind of trademark will you choose? Fanciful and arbitrary marks offer endless possibilities, but finding that one, unique brand that captures your vision can be a challenge. In fact, many new businesses often gravitate toward the more immediate recognition of descriptive marks and even generic words. Although this approach seems intuitive at first (i.e. customers looking for tires will naturally look for a store called “TIRES, TIRES, TIRES”), it comes at a greater long-term cost. That tire customer is looking for ANY tire company and a descriptive brand ensures that you are one of many versus something they will remember. It is worth taking the time to find the right brand that effectively represents your product, captures the uniqueness of your company image, and forges the way for expanding the creativity and further growth of your business.


Melissa Cross