How to Choose a Strong Trademark or Brand Name

Section 45 of the Lanham Act defines a trademark as “any word, name, symbol, or device, or combination thereof … used by a person … to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.” Not all trademarks are treated the same. Understanding the “spectrum of distinctiveness prior to choosing or adopting a trademark or brand name for your goods and services can save you a lot of effort and expense in the future. Remember trademark law is very involved. Always work with a competent trademark attorney to register, maintain and protect your trademark and brand.

Difficulty: Easy

Instructions

1. The “spectrum of distinctiveness consists of four types of marks: (1) arbitrary or fanciful; (2) suggestive; (3) descriptive; and (4) generic. The strength of marks that fall in the first category are the strongest while those that fall in the last category are afforded no protection whatsoever.

2. An fanciful mark is a word, name, symbol, or device or a combination thereof that has no basis in language. It is simply a fabricated mark. E.g. EXXON or VERIZON. This category of marks is treated as “inherently distinctive” which is a term of art in trademark law. Simply put, this means that these marks are afforded the strongest protection against infringers.

3. An arbitrary mark is a word, name, symbol, or device or a combination thereof that has some basis in language or life, but the usage to which it is put in the context of goods and services is unrelated to its commonly accepted definition or meaning. E.g. APPLE for computers or CAMEL for cigarettes. This category of marks is also treated as “inherently distinctive” which is a term of art in trademark law. Simply put, this means that these marks are afforded the strongest protection against infringers.

4. A suggestive mark is exactly what it says – it implies rather than describes the goods and services. So the customer has to make a leap of imagination to determine the nature of the goods and services. E.g. CHECK INTO CASH for payday loans or MUSTANG for fast cars. This category of marks is not as strong as fanciful or arbitrary marks but is also registrable with the USPTO.

5. A descriptive mark describes the purpose, function, use, size, class, or some characteristic of the goods. These marks are not “inherently distinctive” but may (emphasis on “may”) upon presenting evidence of “secondary meaning.” E.g. PARK N FLY for airport parking. A merely descriptive mark, however, is not protectable.

6. A generic mark is never protectable and is never afforded protection because it is the commonly used word, name, symbol, or device or a combination thereof for referring to the goods and services. E.g. APPLE for apple fruit or BOOK for books.

Tips & Warnings

• The information provided in the article is for informational purposes only. It should not be construed as, nor relied upon as, legal advice.