What Makes a Good Trademark?

Not all marks are created equal. The law provides greater protection to some marks than others, largely dependent on how distinctive a mark is. In this regard, there is a spectrum of distinctiveness:

Coined or fanciful marks are terms that are made up. They do not exist in any language. Examples include CLOROX, EXXON, GOOGLE, POLAROID, and XEROX. All things being equal, coined marks receive the most legal protection. This is because a coined term does not exist elsewhere and consumers are more likely to associate the newly coined term with your business.

Arbitrary marks are real words that exist in either the English language or some foreign language. However, arbitrary marks have nothing to do with the good or service that they are used with. In other words, they do not suggest or describe any characteristic of the good or service. The following are some examples of arbitrary marks: APPLE for computers (apples have nothing to do with computers), CAMEL for cigarettes, GUESS? for jeans, PENGUIN for books, and SHELL for gasoline. Arbitrary marks receive the second most legal protection, or, in other words, arbitrary marks are the second strongest type of mark.

Suggestive marks do not directly describe the good or service they are used with. Instead, they suggest some something about the good or product. Here are some examples: AMAZON for books; CHICKEN OF THE SEA for tuna; COPPERTONE for suntan lotion; GREYHOUND for bus services; and WRANGLER for jeans. Suggestive marks receive the third strongest type of mark.

Descriptive terms describe some feature or function of the good or service they are used with. Generally, they cannot serve as trademarks because they are not distinctive enough to allow a consumer to associate the descriptive term with a particular company. Examples include COMPUTERLAND for computer stores, HEALTHY CHOICE for nutritious foods, HONEY ROAST for roasted nuts, RITE-FIT for furniture slip covers, and SUPER GEL for shaving gel. Descriptive terms are not protectable as trademarks.

However, descriptive terms can function as trademarks once the law deems that the descriptive term has “acquired distinctiveness.” This means that a company has spent a considerable amount of money on marketing the descriptive term in connection with its goods or service or has sold a considerable amount of goods or services under the descriptive term so that consumers now associate that descriptive term with that company. For example, BEST BUY is a descriptive term for a store that sells computer and electronics, but because BEST BUY has attained widespread recognition, the BEST BUY mark has “acquired distinctiveness” and can function as a trademark Other examples include BEVERAGES AND MORE for a retail beverage store, INTERNATIONAL BUSINESS MACHINES for computers, and SHARP for televisions. Even though descriptive marks with acquired distinctiveness are protectable, they are the weakest of all protectable trademarks.

Generic terms can never function as trademarks. A generic term is the name of the good or service itself. For example, the term car is the generic name for an automobile just as the term supermarket is the generic name for a grocery store. Generic terms can never be trademarks because competitors must have the right to use these terms and because the terms are not distinctive enough (too generic) to identify or differentiate one company’s goods or services from another’s.

Other factors besides distinctiveness can affect the strength of a trademark. A common factor that affects the strength of a trademark is whether there are a lot of other people using the same or similar mark. Even if you pick a coined, arbitrary, or suggestive mark, your mark is going to be considered weaker if there are a lot of similar marks out there already. In this situation, consumers will find it harder to associate your mark with you because there are so many other people out there with the same or similar mark.

If you have chosen a potential trademark, we can help you assess the strength of your trademark. Or if you need help selecting a trademark in the first place, we can assist you in conceiving your trademark.