How to Choose the Strongest Possible Trademark

When selecting a trademark for your company, one you would like to associate with your goods and/or services, it is always beneficial to determine and choose the strongest possible mark beforehand. Doing so will save you the stress and expense involved in trying to protect a mark that is difficult to protect.

The Trademark Strength Spectrum

Trademarks run a spectrum when it comes to their relative strength:

  • generic – no protection available

  • descriptive – protection may be established by use (acquired distinctiveness)

  • suggestive – inherently protectable

  • arbitrary/fanciful – inherently protectable

A brief consideration of each kind of trademark will help you to understand how to choose a strong trademark that is inherently protectable.

Generic marks cannot be protected because it is impossible to prevent others from using them. For example, marks like “Computer Repair”, “Cell Phone” or “Cookies” are generic. They refer to specific items, goods, or services and cannot be protected as a trademark.

Descriptive marks use words that describe a company’s goods or services. The may also describe functions or characteristics. This kind of mark is generally weak but over time, the protection it offers can improve as it acquires distinctiveness. One good example of a descriptive mark that became established with use is Sports Illustrated magazine.

Suggestive marks use words that relate to the goods and services but are not necessarily descriptive of them. They offer a considerably greater amount of protection than descriptive marks. These marks require a bit more thought and imagination to reach a conclusion about how they apply to the goods or services a company has to offer. One baby stroller company came up with an excellent suggestive mark when they registered “Rock & Roll” as their trademark.

Arbitrary marks offer their owners excellent protection. They involve the use of words that are real, but do not have any literal connection to the goods or services. Apple computers are a good example of a successful arbitrary mark.

Fanciful marks are also very strong marks. Fanciful marks use made up terms and words to describe goods or services. Companies with fanciful marks include Kodak, Exxon, Reebok and Polaroid, just to mention a few.

Choosing a Strong Mark

Imagine you have a successful restaurant and are looking to register a trademark for it. The following chart will give you an idea of how to determine which marks are strong and worth considering and which are weak and better off discarded.

Trademark Type

Restaurant Name

Strength Level

Generic

The Restaurant

Very Weak, Unprotectable

Descriptive

Italian Diner

Weak

Suggestive

A Taste of Italy

Medium to Strong

Arbitrary

The Fountain

Strong

Fanciful

Nanicio

Strong

 When in doubt, remember that fanciful and arbitrary marks always offer the best protection for your brand.

If you would like a consultation about the strength of a mark you would like to register with the USPTO, feel free to contact me any time.

 
Kelly G. Swartz is a patent attorney licensed to practice in front of the United States Patent and Trademark Office and in the state of Florida.  She limits her practice to intellectual property law including patent, trademark, copyright, and trade secrets.