How Good is Your Trademark?

Not all trademarks are created equal.  The more distinct your trademark is the better it is.  Trademarks that are more generic may need to be registered in the supplemental register instead of the more powerful principle register or worse yet simply be refused.  Courts divide trademarks into five different categories, ranked by degree of inherent distinctiveness. Arbitrary, fanciful and suggestive trademarks are the easiest to protect, descriptive marks offer protection under certain circumstances and generic marks never offer protection. When contemplating a trademark for your business, you should always strive to choose (and register) trademarks that can comfortably fit into one of the three strong trademark categories.

Fanciful Trademark: A fanciful trademark is made-up, invented for the sole purpose of functioning as a trademark. This is also called a neologism when it describes a single word. Kodak and Exxon are famous examples of fanciful trademarks. George Eastman, creator of the Kodak trademark, had some simple yet profound advice on what makes a good trademark: he said it should be short, vigorous, easily spelled and meaningless.  I highly recommend his advice!

There are websites that create made up words that you may use for your business.  Search for "business name generator" to find them and have some fun.
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Arbitrary Trademark: An arbitrary trademark has a common meaning, but the meaning is unrelated to the goods or services offered for sale under the mark.

Apple (computers) is a good example of this type of trademark. We all know that the common meaning of apple is as a fruit, which is pretty far removed from the 

digital world (insert your own lame “byte” joke here). In the case of less edible and more digital Apple, this choice of trademark (rumored to have been an impulsive decision based on a temper tantrum by the legendarily cantankerous Steve Jobs) actually has been quite costly. Apple had been established as a trademark by virtue of being the name of the Beatles’ record company (Apple Corps). As a result, Apple Computer has lost a couple of very costly court battles related to its foray into anything musical.

Another example of an arbitrary trademark is the online retail giant Amazon.  Many people probably don't know that Amazon is the name of the worlds largest river but even so there is no relationship between the two making Amazon a great trademark for the online retailer.
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Suggestive Trademark: A suggestive trademark is so named because it suggests a quality or characteristic of goods and services; such a trademark might also be called allusive. However, a suggestive trademark requires a subtle leap in thought (or as courts often put it, “imagination, thought and perception”) for the consumer to reach a conclusion as to the exact nature of the goods. Citibank (financial services), Greyhound (bus lines), Jaguar (automobile), and Playboy (magazine) are examples of well known suggestive trademarks.

Many marketing professionals prefer suggestive to arbitrary or fanciful trademarks because the latter plants a seed in the mind of consumers as to the nature of the goods and thus requires fewer marketing and advertising expenditures to build brand awareness.

Descriptive Trademark: A descriptive trademark merely describes some portion of the goods or services to be sold under the mark. Courts often use the guidelines that a trademark is descriptive if it “conveys an immediate idea of the ingredients, qualities or characteristics of the goods”. Descriptive trademarks may only achieve substantial federal protection if they acquire “secondary meaning” –which typically takes at least five years and a significant advertising 

budget. Thus, owners of trademarks that walk the line between descriptive and suggestive obviously want to convince the trademark office that their trademark is actually suggestive.  Another option is for owners to register on the supplemental register and wait five years to upgrade to the principle register.

Generic Trademark: A generic trademark can not be protected as a trademark because it describes a category of product or service. This is a matter of public policy; the federal government has determined that free use of such categorical trademarks benefits consumers.  An example would be registering for a trademark "HAIR SALON" for your hair salon business.  The trademark office will reject your application because many hair salons will want to use same words in their trademark.