For business owners, it’s very important to understand that not all trademarks are created equal. In my previous post I expressed that one of the factors taken into account when assessing trademark infringement is the “strength of the mark”.
The law has generated several classifications to identify the strength of any particular trademark being used in commerce. As a business owner, it is important to be aware of these classifications because it will help you not only when branding a particular product or service, but when also federally registering the mark and trying to defend that brand.
Because branding and the subsequent marketing is essential to creating brand differentiation, knowing how to create a strong mark could save you time and money down the road while better ensuring that you receive substantial trademark protection.
The different classifications of trademark strength are: Fanciful, Arbitrary, Suggestive, Descriptive, and Generic.
Fanciful (Coined Terms)
Fanciful marks are terms that are made-up for the sole purpose of serving as a trademark. These words have no dictionary meaning and, as a result, no direct or indirect association with the product or service for which it is being used. Because these are made-up terms, fanciful marks are given the broadest scope of protection. Some examples of Fanciful marks/terms are:
Arbitrary marks are terms that exist in common language (i.e. have a dictionary description) but have absolutely no relation to the product or service for which it is being used. Arbitrary marks, like fanciful marks, receive a broad scope of protection. However, unlike fanciful marks, companies using arbitrary marks would be unable to stop third parties from using the mark in connection with goods or services that are related to the mark’s definition. Some examples of arbitrary marks are:
- APPLE (computers)
- JAGUAR (car)
- SUBWAY (restaurant services)
- GOOGLE (search engine)
Suggestive marks are terms that imply some benefit or attribute of the goods or services for which it is used. Suggestive marks are more commonly used than fanciful or arbitrary marks due to their marketing potential. These marks sometimes overlap with descriptive marks and receive less protection than fanciful or arbitrary marks. Some examples of suggestive marks are:
- AIRBUS (airplanes)
- VOLKSWAGEN (car)
- THE HOME DEPOT (home improvement centers)
- GREYHOUND (transportation services)
Descriptive marks are terms that describe some characteristic, aspect, purpose, input, or feature of the products or services for which it is used. Outside of a few exceptions, very little protection is granted to descriptive marks, and it is very difficult to federally trademark descriptive terms. Descriptive marks are given the least amount of protection. Some examples of descriptive marks are:
- WORLD BOOK (encyclopedia)
- BEST BUY (electronics store)
- FIRST BANK (banking services)
- CHAP STICK (lip balm)
As an aside, marks that consist of surnames (i.e. Anderson’s Fish & Chips) are typically placed in the same category as descriptive marks. When these marks achieve secondary meaning (wide-spread, extensive use and popularity), they are afforded trademark protection (i.e. McDonald’s and HYATT Motel).
Generic marks consist of terms that actually name a product. These terms receive no trademark protection. This is because to grant exclusivity of use would unfairly limit the ability of others offering the same product or service to compete in regards to that specific offering. Some examples of generic terms are:
- SHREDDED WHEAT (cereal)
- SUPER GLUE (adhesive)
It is important to note that some trademarks can become generic if the public misuses the mark on a mass scale (i.e. ASPIRIN, BAND-AID).
Knowing the differences in the strength of a mark will allow you as a business to create stronger marks and better understand the level of protection that you are able to receive when facing cases of trademark infringement.