Before you invest in marketing or file a trademark application, it’s important to understand how U.S. law defines a protectable brand. Trademark strength is key to registration—and if your name is too generic or descriptive, it may be rejected by the USPTO. Here’s how to evaluate your trademark’s distinctiveness.
Depending on a trademark’s strength, it might not be protectable. Take a quick look at these rules before you pick a name for your brand.
In order to qualify as a trademark under US law, a brand name must be distinctive and serve as a “source identifier.” In other words, a consumer would have to be able to look at the branding and know which company is offering the goods or services.
Taking this into account, trademarks fall on a spectrum ranging from weak to strong, categorized as either generic, descriptive, suggestive, arbitrary, or fanciful. When it comes to federal registration at the United States Patent and Trademark Office (“USPTO”), generic and descriptive brands are rarely acceptable, whereas suggestive, arbitrary, and fanciful brands usually are.
Let’s look at these categories in more detail, so you can decide where on the spectrum your trademark falls.
A trademark is generic if it is a common name for an item or service, such as car, coat, or hat. The prohibition against registering a generic trademark is understandable, since we all use these words every day and it would be unfair for someone to be able to monopolize them!
Another challenging type of trademark is a descriptive one. A perfect example of a descriptive trademark would be using the word creamy as a yogurt brand – notice how the word creamy directly describes a “quality or characteristic” of the product. Luckily, under certain circumstances, you can develop rights to this type of trademark. If, say, the brand name is a little more complex than the creamy example, you can likley “acquire distinctiveness” through consistent, exclusive and frequent use.
One step up from there, are suggestive trademarks. Suggestive trademarks are the weakest of the strong trademarks and, as the name suggests, suggestive trademarks suggest a quality or characteristic of the goods or services, but do not describe them. The analysis is somewhat vague, but a trademark is suggestive and not descriptive if a consumer would not immediately know what the goods or services are, when they see the brand. Examples include “Microsoft” for microcomputer Software and “Netflix” for an internet-based streaming service for movies (aka “flicks”).
The strongest trademarks are fanciful and arbitrary trademarks. Fanciful trademarks are words that are completely made up, like Kodak, Lexus, and Exxon. An arbitrary trademark would be a common word, that is used on an unrelated good or service, such as Apple for a computer, Dove for soap and Coach for purses.
If you think your brand name might be a weaker trademark, or you received an Office Action from the USPTO calling it generic or descriptive, don’t give up just yet. There are a number of creative options we can use to defend and bolster your rights.
Bottom Line:
Whether your trademark is made up or just clever, its strength matters. The more distinctive your brand name, the more likely it is to qualify for registration—and to hold up in court. If your mark is descriptive or has been rejected by the USPTO, don’t panic. With legal strategy and smart branding, even weaker trademarks can be strengthened and protected.
Have questions about your trademark application?
Contact Stemer Law | hello@stemerlaw.com | (303) 928-1094 | Based in Colorado | Serving clients nationwide and internationally
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