What Makes a Good Trademark?
Good trademarks are “distinctive.” Only distinctive marks are protectable. Because the purpose of a trademark is to identify a single source to the consumer, it must be distinctive.
In trademark law, “distinctive” means that the mark is capable of distinguishing the goods or services with which it is used from the goods or services of others. A mark can be inherently distinctive, or it can acquire distinctiveness through extensive exclusive use in U.S. commerce. When we talk about “distinctiveness,” there is a spectrum ranging from arbitrary or fanciful (very distinctive) to generic (not distinctive at all). The four categories of increasing distinctiveness are: generic, descriptive, suggestive, and arbitrary/fanciful. Arbitrary, fanciful, and suggestive marks are considered to be inherently distinctive.
Fanciful – Fanciful marks are the strongest and most distinctive because they are invented, or made up, words. Examples of fanciful marks include EXXON (gasoline), PEPSI (soda), GOOGLE (online services), and ZAPPOS (online shoe store).
Arbitrary – Arbitrary marks are common words used in uncommon or unexpected ways. For example, APPLE is a common word, but it has no relationship to the computers and electronics the company makes and sells. Other examples include DOMINO’S (pizza) and SUBWAY (sandwich restaurants).
Suggestive – Suggestive marks, though inherently distinctive, are not as strong as fanciful and arbitrary marks. It’s not surprise that these marks suggest a quality or characteristic of the goods or services. BOILING CRAB (seafood restaurant), GREYHOUND (bus line), and JAGUAR (cars) are suggestive marks.
Descriptive – Descriptive marks are not inherently distinctive, but they can acquire distinctiveness. Until they do so, they are not protectable as trademarks. These marks describe a characteristic, quality, feature, or purpose of the goods or services. Determining whether a mark is descriptive or suggestive can be tricky because there sometimes can be a fine line between descriptive and suggestive marks. While suggestive marks require some imagination to determine the nature of the goods or services, descriptive marks require no such imagination and immediately impart the nature of the goods or services.
Some examples are BANK OF AMERICA (banks), ALL BRAN (cereal), and BEST BUY (retail stores). These marks are protectable even though they are descriptive because they have acquired distinctiveness. A descriptive mark may be registered on the Supplemental Registration. A trademark owner can then show acquired distinctiveness by providing evidence that the public perceives the descriptive term as a source-identifying trademark. This evidence includes:
- Substantially exclusive and continuous long-term use as a trademark
- Extensive successful advertising
- Consumer surveys
Generic – Generic terms are not distinctive at all, can never acquire distinctiveness, and can never be protected as trademarks. Generic terms are the actual common names for particular goods or services. CHURRASCOS (steak restaurants), FONTINA (cheese), and MATTRESS.COM (online mattress store) are all generic terms. Further, without adequate brand protection, trademarks can become generic in the public’s mind. Some marks that have suffered genericide include ASPIRIN, ESCALATOR, and KEROSENE.