What is a trademark?
A trademark (“mark”) is a word, phrase, design, symbol, or combination thereof that identifies and distinguishes the source of one company’s products from that of another. Having a strong mark is important to secure your brand’s preeminence in the marketplace and prevent others from registering confusingly similar marks to those of your own. When used in interstate or foreign commerce, trademarks may be registered with the United States Patent and Trademark Office. To function as a trademark, the actual mark must be distinctive. A marks level of distinctiveness determines the level of protection that it is afforded.
Generally, there are several different levels of distinctiveness, ranging from fanciful marks having the strongest level of protection to generic marks having none. In fact, trademarks can become generic over time through improper use in which they lose their trademarked status.
When selecting a trademark, the strongest and most protectable brands are those that are considered fanciful. Fanciful marks are made-up words or phrases that do not have any other meaning besides its association with the goods or services. Becoming your own lexicographer is the simplest way of ensuring meaningful and robust trademark protection for your brand.
Examples of fanciful trademarks include: EXXON, KODAK, and ADIDAS.
The second strongest classification of trademarks is known as an arbitrary trademark. An arbitrary mark is a word that’s ordinary dictionary meaning is something other than the goods or services that are rendered under the mark.
The most famous example is the APPLE brand for computers and electronics. Specifically, the common dictionary definition for “apples” defines an “apple” as a type of round, edible fruit from a tree. However, in the context of the APPLE mark, the word “apple” is being used to describe computers and electronics rather than the edible fruit of a tree.
The next tier of classification for a trademark is the suggestive mark. While they are not as distinctive as fanciful or arbitrary marks, it takes a consumer some degree of imagination to determine the products. Additionally, suggestive marks may also embody certain qualities or characteristics of the goods or services they are providing, such as NETFLIX. Specifically, NETFLIX suggests to a consumer that you can watch movies (FLIX) over the internet (NET).
On the scale or distinctiveness, descriptive marks are some of the weakest types of trademarks. As their name suggest, they simply describe the products and do not require an ordinary consumer to use their imagination. However, if a mark is found to be merely descriptive, it will may be refused registration on the principal register and have to be registered on the supplemental register instead. Descriptive marks are protectable on the principle register only with a showing of “secondary meaning.” Secondary meaning requires that an ordinary consumer recognizes the mark as a trademark, rather than an ordinary word.
Examples of descriptive marks include BRITISH AIRWAYS, PIZZA HUT, or AMERICAN AIRLINES.
The fifth and final classification, generic terms, can never function as a trademark. Generic terms simply function to describe the goods or services being provided. Examples of generic terms would include BEER AND WINE for someone selling beer and wine products. Generic terms are not registerable either on the primary or the secondary register because if the USPTO permitted their registration, it would prevent others from describing the products they provide.
While generic terms can never be registered or serve as trademarks, a mark can become generic and lose its trademark protection through what is sometimes referred to as “genericide.” A famous example of genericism is the term “escalator.” The “escalator” was previously a registered trademark of the Otis Elevator Co. that was used to describe moving staircases. Other examples include “dry ice,” “aspirin,” and “cellophane.”
Whether you are just starting your business or are already an established company looking to trademark a new product, it is crucial to choose a strong trademark and establish your dominance in the industry. Your trademark is a valuable asset, and it is essential to understand how to select, protect, and defend your trademark effectively.