Trademark Strength & Distinctiveness

Not all trademarks are created equal. Some marks are inherently strong and easy to protect, while others are weak or entirely unregistrable. Understanding where your proposed mark falls on the distinctiveness spectrum is essential before you invest in branding, file an application, or build your business around a name.

The Trademark Strength Spectrum

Trademark law evaluates marks on a spectrum of distinctiveness, ranging from the strongest (most protectable) to the weakest (unprotectable). This spectrum determines whether your mark can be registered, how easy it will be to enforce, and how broad your rights will be.

Fanciful Marks: The Strongest Protection

Fanciful marks are invented words that have no meaning before their use as trademarks. They only have meaning in relation to the specific goods or services they identify.

Characteristics

Fanciful marks are:

• Completely made-up words with no dictionary definition
• Inherently distinctive from day one
• The strongest possible trademark protection
• Immediately registrable without proof of use or recognition

Examples

KODAK for cameras and film
Before Kodak created this word, it meant nothing. Now it's instantly recognizable as a photography brand.

XEROX for photocopiers
An invented word that became so successful it faced genericization (people saying "xerox" to mean "photocopy").

EXXON for petroleum products
Created specifically as a trademark after extensive linguistic research to ensure it was distinctive and pronounceable in multiple languages.

PEPSI for soft drinks
An invented word that has no meaning outside the brand context.

Advantages and Considerations

Advantages:

• Strongest legal protection available
• Easier to enforce against competitors
• Broader scope of protection
• No risk of descriptiveness refusals
• Unique and memorable

Challenges:

• Requires significant marketing investment to build brand recognition
• No immediate association with what you sell
• Customers can't guess what your business does from the name alone
• Higher initial marketing costs to educate the market

When to choose fanciful marks: If you have the budget for brand-building and want maximum legal protection, fanciful marks are ideal. They're particularly popular with consumer products, pharmaceuticals, and companies building long-term global brands.

Arbitrary Marks: Real Words, Unrelated Meanings

Arbitrary marks use real dictionary words, but in ways completely unrelated to the goods or services they identify. The word has a known meaning, but that meaning has nothing to do with what you're selling.

Characteristics

Arbitrary marks are:

• Real words with established meanings
• Applied to unrelated goods or services
• Very strong trademark protection
• Immediately registrable

Examples

APPLE for computers and electronics
"Apple" means a fruit. Using it for computers is arbitrary because apples have nothing to do with technology. If an apple orchard tried to register APPLE for selling apples, it would be rejected as generic.

AMAZON for e-commerce and cloud services
The Amazon is a river. Using it for online retail is arbitrary and protectable.

DELTA for airlines
Delta means a river formation or the fourth letter of the Greek alphabet. It has no connection to air travel.

SHELL for petroleum products
A shell is a hard protective outer case, typically from a sea creature. Using it for gasoline is arbitrary.

The Arbitrary vs Generic Distinction

The same word can be arbitrary for some goods but generic or descriptive for others:

Why Arbitrary Marks Work

Arbitrary marks balance strong legal protection with some marketing advantage. Unlike fanciful marks, they use familiar words that are easy to remember, spell, and pronounce. However, like fanciful marks, they require marketing investment to associate the word with your specific business.

Advantages:

• Very strong legal protection
• Easier to remember and spell than fanciful marks
• Distinctive and protectable
• Can create strong brand associations through marketing

Challenges:

• Still requires significant marketing to build brand association
• Must compete with the word's existing meaning in customers' minds
• Need to establish that YOUR use of the word refers to your brand

When to choose arbitrary marks: If you want strong protection but prefer using real words that are easier to remember and spell than invented words. Arbitrary marks work well across all industries.

Suggestive Marks: Imagination Required

Suggestive marks hint at qualities or characteristics of the goods or services but don't describe them outright. They require imagination, thought, or perception to connect the mark to the product.

Characteristics

Suggestive marks:

• Suggest a quality or characteristic
• Require mental leap to connect mark to goods/services
• Are registrable without proof of secondary meaning
• Provide strong (but not maximum) protection

Examples

COPPERTONE for sun tanning products
Suggests you'll get a "copper tone" (tan) from using the products. Doesn't directly state "tanning lotion" or "sunscreen."

GREYHOUND for bus services
Suggests speed and reliability (like a greyhound dog) but doesn't describe bus transportation.

NETFLIX for streaming services
Suggests network + flicks (movies) but doesn't directly say "online movie rental service."

MICROSOFT for software
Suggests microcomputer software but requires connecting the dots.

AIRBUS for aircraft
Suggests air travel in a bus-like vehicle (large capacity) but doesn't outright describe an airplane.

Suggestive vs Descriptive: The Critical Distinction

The line between suggestive and descriptive marks is one of the most important—and most litigated—questions in trademark law. This distinction determines whether your mark is immediately registrable or requires proof of secondary meaning.

Real-World Suggestive vs Descriptive Cases

Suggestive (Approved):

• CITIBANK for banking services (suggests city-wide banking, requires connecting "citi" to cities)
• CHICKEN OF THE SEA for tuna (suggests quality, requires imagination—tuna isn't chicken)
• PENGUIN for books (suggests formal, distinguished content—penguins wear "tuxedos")

Descriptive (Refused or Required Secondary Meaning):

• QUICK PRINT for printing services (directly describes fast printing)
• VISION CENTER for optical services (directly describes what the business does)
• BED & BREAKFAST REGISTRY for lodging reservation services (exactly what it is)

Advantages and Considerations

Advantages:

• Immediately registrable (no proof of secondary meaning needed)
• Provides good legal protection
• Conveys something about your brand without being obvious
• Helps with marketing and brand recall
• Balances distinctiveness with consumer understanding

Challenges:

• Requires careful evaluation to ensure it's truly suggestive, not descriptive
• May face examination scrutiny if examining attorney views it as descriptive
• Protection narrower than fanciful or arbitrary marks
• Competitors can still use similar suggestive concepts

When to choose suggestive marks: If you want to communicate something about your product while maintaining strong trademark protection. Suggestive marks are extremely popular because they balance legal strength with marketing effectiveness.

Descriptive Marks: Weak and Generally Unregistrable

Descriptive marks directly describe a quality, feature, function, characteristic, or purpose of the goods or services. They immediately tell customers what the product is or does, without requiring any imagination.

Why Descriptive Marks Are Problematic

Trademark law generally refuses to register descriptive marks because:

1. Public policy: No one should monopolize common descriptive terms that competitors need to describe their own products
2. No source identification: Descriptive terms don't distinguish your brand from others; they just describe what you're selling
3. Fair competition: Competitors must be able to describe their goods accurately

Examples of Descriptive Marks

When Descriptive Marks CAN Be Registered: Secondary Meaning

Descriptive marks can become registrable if they acquire "secondary meaning" (also called "acquired distinctiveness"). This means the mark has become so associated with your brand through extensive use that consumers recognize it as identifying your specific business, not just as a description.

Requirements for proving secondary meaning:

1. Extensive use: Years of continuous use in commerce (typically 5+ years)
2. Significant advertising: Substantial advertising expenditures over time
3. Market recognition: Consumer surveys or evidence showing consumers associate the term with your brand
4. Sales volume: Substantial sales under the mark
5. Exclusivity: You've been the primary or only user

Examples of descriptive marks that achieved secondary meaning:

• AMERICAN AIRLINES (describes origin and industry but recognized as a specific airline)
• BEST BUY (describes good shopping value but recognized as a specific retailer)
• BOOKING.COM (describes booking services but achieved secondary meaning through use)

The Cost and Risk of Pursuing Descriptive Marks

Costs and challenges:

• Initial application will likely be refused
• Must file on Supplemental Register (US) with weaker protections
• Need 5+ years of exclusive use before claiming acquired distinctiveness
• Expensive to prove secondary meaning (consumer surveys cost $20,000-$100,000+)
• Competitors can freely use similar descriptive terms
• Limited scope of protection even after registration
• Enforcement is difficult and expensive

Descriptive Elements in Otherwise Strong Marks

You can include descriptive elements in a mark if the overall mark is distinctive:

However, when registering marks with descriptive elements, you typically must "disclaim" the descriptive portion, acknowledging you don't have exclusive rights to those common terms alone.

Generic Terms: Never Protectable as Trademarks

Generic terms are the common, everyday names for goods or services. They identify what something IS, not who makes it. Generic terms can never function as trademarks and can never be registered, no matter how much you use them or how famous you become.

Why Generic Terms Cannot Be Trademarks

Generic terms are public property. Everyone must be free to use them to identify and describe their products. Granting trademark rights to generic terms would give one company a monopoly on the basic language needed to communicate about an entire category of goods or services.

Examples of Generic Terms

Genericization: When Trademarks Become Generic

Strong trademarks can lose protection if they become the generic term for a product category. This happens when the public begins using the trademark as the common name for the product itself, rather than as a source identifier.

Examples of trademarks that became generic:

• ASPIRIN: Was a Bayer trademark; became generic in the US for the drug compound
• ESCALATOR: Was an Otis trademark; became generic for moving staircases
• THERMOS: Lost trademark protection, now generic for vacuum bottles
• ZIPPER: Originally a B.F. Goodrich trademark for boots; became generic for the fastener

Trademarks at risk of genericization (actively protected by owners):

• XEROX: "Xerox" is trademarked; "photocopy" is generic (Xerox runs ads reminding people)
• KLEENEX: "Kleenex" is trademarked; "facial tissue" is generic
• GOOGLE: "Google" is trademarked; the company fights against "to google" as a verb
• VELCRO: Velcro runs ads asking people to say "hook-and-loop" instead

Generic Top-Level Domains and Generic Terms

Using a generic term with a top-level domain (like .COM) doesn't make it distinctive:

• HOTELS.COM: Combination of generic term + generic TLD required proof of secondary meaning
• BOOKING.COM: Generic term + TLD, eventually registered after proving acquired distinctiveness
• LAWYERS.COM: Generic, required extensive use to register

Industry-Specific Generic Terms

What's generic in one industry might not be in another:

Why Trademark Strength Matters

The strength of your trademark directly impacts three critical areas: registration, enforcement, and scope of protection.

Impact on Registration Success

Strong marks (fanciful, arbitrary, suggestive):

• Approved in vast majority of cases
• Fewer office actions
• Lower attorney fees
• Faster time to registration
• No need to prove secondary meaning

Weak marks (descriptive):

• Initially refused registration
• Require response to office actions
• May need to file on Supplemental Register (US) first
• Need 5+ years before claiming acquired distinctiveness
• Higher total costs and longer timeline

Generic terms:

• Immediately and permanently refused
• No path to registration ever
• Wasted application fees

Impact on Enforcement

Strong marks are easier and less expensive to enforce:

• Cease and desist letters: Recipients take strong marks seriously and often comply
• Opposition proceedings: Higher success rate in blocking conflicting applications
• Litigation: Courts provide broader protection to strong marks
• Settlements: Easier to negotiate favorable terms
• Damages: Can recover greater damages for willful infringement

Weak marks face enforcement challenges:

• Descriptive marks: Competitors can argue they're using descriptive terms fairly, not infringing
• Narrow protection: Can only stop nearly identical uses
• Higher litigation costs: Must prove secondary meaning and actual confusion
• Fair use defense: Competitors can claim descriptive fair use

Scope of Protection

The strength spectrum determines how broadly your mark is protected:

Fanciful/Arbitrary marks get broad protection:

• Can stop similar marks even in related industries
• Protection extends to variations and similar-sounding marks
• Famous strong marks get even broader "dilution" protection

Suggestive marks get good protection:

• Protection against similar marks in same/related goods
• Balanced scope appropriate to most businesses
• Easier to prove likelihood of confusion

Descriptive marks get narrow protection (if registered at all):

• Only protects against nearly identical marks
• Competitors can use similar descriptive terms
• Must prove actual marketplace confusion, not just similarity
• Limited to goods/services where secondary meaning proven

Choosing Strong Marks for Your Business

Selecting the right trademark involves balancing legal strength with marketing effectiveness. Here's a practical framework for making strategic decisions.

The Decision Framework

Step 1: Identify your priorities

Step 2: Evaluate your proposed mark

Ask these questions:

1. Does this mark directly describe what I sell?

   • Yes → Descriptive (weak/unregistrable) → Choose a different mark
   • No → Continue evaluation

2. Does this mark hint at what I sell but require imagination to connect?

   • Yes → Likely suggestive (strong and registrable)
   • No → Continue evaluation

3. Is this a real word unrelated to what I sell?

   • Yes → Arbitrary (very strong)
   • No → Continue evaluation

4. Is this an invented word I created?

   • Yes → Fanciful (strongest protection)
   • No → Re-evaluate or seek professional advice

5. Is this the common name everyone uses for this type of product?

   • Yes → Generic (never protectable) → Must choose different mark
   • No → Proceed

Step 3: Check for red flags (see next section)

Step 4: Conduct trademark search (covered in Chapter 6)

Balancing Strength with Marketing Needs

Different business models have different trademark needs:

Startups with marketing budgets:

• Can invest in fanciful or arbitrary marks
• Build brand recognition through advertising
• Examples: Tech companies (Google, Spotify, Uber)

Small businesses with limited budgets:

• Suggestive marks work well (convey meaning, still protectable)
• Balance immediate understanding with legal strength
• Examples: Coffee shop "Daily Grind" (suggestive, not descriptive)

E-commerce and online businesses:

• Avoid descriptive terms even if they help SEO
• Can use suggestive marks that hint at category
• Examples: Shopify (suggestive of shopping), Zappos (fanciful)

Professional services:

• Geographic + surname combinations common but weak
• Consider adding distinctive elements
• Examples: "Redwood Legal" better than "San Francisco Law Firm"

Product brands:

• Fanciful and arbitrary marks work exceptionally well
• Long-term brand value justifies marketing investment
• Examples: Consumer goods (Tide, Bounty, Cheerios)

Common Mistakes to Avoid

Other mistakes:

1. Using generic terms: Wasted application fees and no protection ever
2. Adding .COM to generic terms: HOTELS.COM faced years of challenges despite success
3. Misspelling descriptive terms: "KWIK" for "QUICK" is still descriptive
4. Using initials of descriptive terms: Still may be considered descriptive
5. Combining two descriptive terms: Often still descriptive overall
6. Assuming you can prove secondary meaning later: Takes 5-10+ years and major investment
7. Confusing strong product names with strong trademarks: "Professional Email Service" describes your product well but is a terrible trademark

Practical Examples by Industry

Red Flags: Additional Weak Mark Categories

Beyond the descriptive/generic spectrum, certain other categories of marks face registration challenges and weaker protection.

Surnames (Last Names)

Rule: Surnames are considered primarily merely a surname and are not registrable unless they've acquired secondary meaning.

Why: The USPTO and EUIPO want to preserve individuals' rights to use their own names in business. Allowing easy trademark registration of surnames would prevent others with that name from using it commercially.

Examples of surnames requiring secondary meaning:

• MCDONALD'S (common surname, acquired meaning through massive use)
• FORD (common surname, now associated with vehicles)
• DELL (surname, now associated with computers)

How to overcome surname refusals:

1. Prove the name has acquired distinctiveness (secondary meaning)
2. Add distinctive design elements or additional wording
3. Show the name has another meaning (if applicable)
4. Wait until you have 5+ years of exclusive use

Tip: If your business is named after you, consider adding a distinctive element (e.g., "Redwood" + surname, or stylized logo) to strengthen the mark.

Geographic Terms

Rule: Geographic terms that describe the origin of goods or services are weak and may be refused as geographically descriptive.

Why: Competitors in the same location need to be able to describe where their goods come from.

Examples:

• PHILADELPHIA CREAM CHEESE (geographic + generic/descriptive)
• KENTUCKY FRIED CHICKEN (geographic + descriptive)
• AMERICAN AIRLINES (geographic + descriptive of industry)

All of these required extensive use to become protectable through secondary meaning.

Geographic terms are registrable if:

1. Arbitrary (NORTH FACE for outdoor gear—doesn't indicate geographic origin)
2. Remote/obscure locations with no connection to goods
3. Combined with other distinctive elements
4. After acquiring secondary meaning through use

Geographically deceptively misdescriptive: If the mark falsely suggests a geographic origin that customers care about, it's never registrable (e.g., DANISH for pastries not from Denmark).

Merely Ornamental Matter

Rule: Designs or words used purely for decoration, not to identify source, cannot function as trademarks.

Examples:

• A decorative pattern on clothing that doesn't identify the brand
• Text on t-shirts that's just a slogan, not a brand identifier
• Decorative stitching that's purely aesthetic

How to show it's not merely ornamental:

• Use it consistently as a brand identifier
• Feature it prominently on tags and labels
• Use it in advertising as a source identifier
• Show consumers recognize it as identifying your brand

Functional Features

Rule: Functional features of a product cannot be trademarked. Trademark law cannot be used to obtain patent-like protection for useful features.

Types of functionality:

1. Utilitarian functionality: Feature is essential to the product's use or purpose

   • Example: The shape of a Phillips-head screwdriver cannot be a trademark

2. Aesthetic functionality: Feature is essential to the product's appeal or affects its cost/quality

   • Example: A color that's essential to the product's purpose (camo pattern for hunting gear)

What CAN be trademarked:

• Non-functional design elements
• Arbitrary color choices (Tiffany Blue, UPS Brown)
• Product shapes that are distinctive but not functional (Coca-Cola bottle)

Other Problematic Categories

Strength Assessment Exercise: Evaluate Your Mark

Use this self-assessment tool to evaluate whether your proposed trademark is likely to be registrable and protectable.

Part 1: Initial Classification

Question 1: Is your mark the common name for the product/service category?

• Yes → STOP. It's generic and never protectable. Choose a different mark.
• No → Continue

Question 2: Does your mark directly describe a quality, feature, ingredient, or function of your product/service?

• Yes → Likely descriptive. Consider choosing a different mark or be prepared for registration challenges.
• No → Continue

Question 3: Does your mark hint at or suggest qualities of your product/service but require imagination to make the connection?

• Yes → Likely suggestive (strong and registrable)
• No → Continue

Question 4: Is your mark a real word that has no relation to your product/service?

• Yes → Arbitrary (very strong)
• No → Continue

Question 5: Is your mark an invented word with no dictionary meaning?

• Yes → Fanciful (strongest protection)

Part 2: Red Flag Check

Check all that apply to your mark:

• It's a surname (last name)
• It's a geographic location that describes where goods come from
• It's primarily decorative, not a brand identifier
• It's a functional feature of the product
• It's self-praising or laudatory (BEST, PREMIUM, ULTIMATE)
• It's a common phrase or saying
• It directly translates to a descriptive term in another language

If you checked any boxes: Your mark faces additional challenges. Consider adding distinctive elements or choosing a different mark.

Part 3: Overall Assessment

Score your mark:

Part 4: Competitive Analysis

Research 3-5 competitors in your industry:

1. What types of marks do successful competitors use? (Fanciful, arbitrary, suggestive, descriptive?)
2. Are there common descriptive terms in your industry that everyone uses?
3. What marks have failed or faced opposition?

Insight: If successful competitors use fanciful or arbitrary marks, that's often a signal that descriptive marks don't work well in your industry.

Frequently Asked Questions

What's Next

Now that you understand trademark strength and can evaluate whether a proposed mark is registrable and protectable, the next critical question is: What FORM should your trademark take? Chapter 3 explains the different types of trademarks—word marks, logos, sounds, colors, and more—and helps you decide which type (or combination) is right for your brand.