The process of developing a successful brand for your business can be difficult and overwhelming. One must consider a variety of factors, including the products or services that will be associated with a specific mark and decide how to effectively market them with a strong, unique brand, such that consumers will develop trust and goodwill in the business. It is usually beneficial tostart by developing a list of potential candidate trademarks, then consider the strength of the marks and the likelihood of registration. In determining registerability, it is helpful to know that trademarks are categorized based on their strength or distinctiveness. In this article, we discussthe various categories of marks available and whether they are registerable. Generally, a strong or distinctive mark is easier to register and to protect from infringers than a descriptive, weaker mark. Descriptive marks are also often more challenging to enforce should someone infringe on the mark.
The strongest trademark is a “coined” or “made-up” word that has no meaning other than as a trademark. For example, VERIZON and KODAK are well-known examples of such marks. While they may be more difficult for consumers to remember at first, since they do not carry any inherent meaning, a trademark owner has a great opportunity to create a positive association between the mark and a product, service, or business. Once this goodwill is established, coined trademarks generally are afforded the broadest scope of protection against infringers.
Arbitrary marks are comprised of words that have a common meaning but are applied to a product or service that is unrelated to that meaning. For example, APPLE for computers, SHELL for gasoline, and BLACKBERRY for cell phones. Like coined marks, established arbitrary marks are afforded a broad scope of protection against infringers.
Suggestive marks indicate some quality or characteristic of the products or services with which they are associated, but they do not directly describe the product or service. Rather, they require some imagination, thought, or perception for the consumer to reach a conclusion as to the exact nature of the products or services. Examples of suggestive marks are AIRBUS for airplanes, KITCHENAID for kitchen appliances, and SWEETARTS for candy.
In contrast to the above-described marks, descriptive marks directly identify the nature of the products or services without imagination, thought, or perception. However, it is typically difficult to register and prevent others from using merely descriptive marks because of the competitive need to describe products and services accurately. For example, COLD AND CREAMY as a trademark for ice cream, or merely laudatory terms such as “best” or “quality,” describes attributes of the product and are likely not registerable. However, if consumers learn to identify the mark as being associated with a single source of origin for that product or service as a result of years of exclusive use, that mark acquires secondary meaning, and it may be registered and protected.
Finally, a generic term is a word or phrase that is the common term associated with a particular category of products or services, and thus cannot function as an indicator of origin. Escalator and cellophane are classic examples of terms that once functioned as trademarks but that, through lack of protection, became generic and now are used as the common names for the products, regardless of their source. Like some descriptive marks, generic terms are not registrable or protectable.
As is highlighted by this article, spending some time and money in choosing and registering the right type of mark for your business can mean the difference between success and failure of a brand.If you have a potential trademark you would like to register, please contact the experienced attorneys at Gehres Law Library to discuss the likelihood of success for registration, or for assistance in choosing a new trademark. We offer a free initial evaluation to new clients.