It Pays to be Different

The different categories of trademarks and benefits of an original trademark

By Trademark Garden | March 20, 2018

Have you ever wondered why the majority of major brands use trademarks that have use made up words, or, at best, words that have nothing to do with what they sell? Apple doesn’t sell fruit, Amazon has nothing to do with rivers or rain forests, and what is a google” anyway? The reason for this has at least something to do with the respective strengths of different categories of trademarks. The categories, from strongest to weakest, are:

Fanciful

This category is comprised of nonsense words and phrases, that is, words with no meaning or connotation in English or any known foreign language, which the brand owner has personally created. Examples include: EXXON, KODAK, and GOOGLE. As the strongest form of trademark, these trademarks are eligible for Principal Register trademark registration, and as invented terms, any unauthorized third-party use of such trademarks is likely intentional. This makes your job as the rights holder easier, and can even allow you to seek punitive damages against infringers based on their bad faith copying of your fanciful mark.

Arbitrary

This category is comprised of words and phrases that have a known meaning, but the meaning is completely unrelated to the goods or services being provided under the trademark. For example, APPLE for computers, or AMAZON for online retail services. This is still a very strong trademark that is eligible for Principal Register trademark registration, and affords the full suite of exclusive use rights. Likewise, you as the rights holder should be able to show intentional misuse of your trademark as there is no reason that a competitor would be using the same unrelated word to describe their goods or services.

Suggestive

This category is comprised of words and phrases that suggest the nature, purpose, quality, or origin of the goods, without outright describing the goods, and require imagination, thought, or perception to reach a conclusion as to the nature of those goods or services.” (TMEP 1209.01(a)) For example, COPPERTONE for sunblock, as the purpose of the sunblock is to allow users to tan without burning, taking on a copper tone.” This category of trademark is still eligible for Principal Register protection, but the line between suggestive and merely descriptive trademarks is very murky, which may give third parties a route to essentially invalidate your trademark rights by claiming that your trademark is actually merely descriptive. For example, another sunblock company could plausibly argue that COPPERTONE” describes the function of sunblock, that is, that use of the sunblock causes users skin to take on a copper tone, and that the trademark is therefore merely descriptive. If this hypothetical opposer were to argue this convincingly, they could invalidate COPPERTONE’s Principal Register trademark protection.

Merely Descriptive

This category is comprised of words and phrases that describe an ingredient, quality, characteristic, function, feature, purpose, source, or use of the goods or services, and feature no elements that are suggestive, arbitrary, or fanciful. For example, COASTER-CARDS for coasters that could also be direct mailed as postcards, or APPLE PIE for apple pie scented potpourri. Merely descriptive terms are assumed to be incapable of functioning as unique source identifiers and are therefore ineligible for Principal Register trademark registration under normal conditions. Instead, a merely descriptive trademarks must be registered on the Supplemental Register, which grants no substantive rights to personally police the trademark. That said, Supplemental Register registrations are still cited by the USPTO against newly filed trademarks considered to be confusingly similar.” In addition, a merely descriptive trademark may be eligible for Principal Register registration if the mark holder can show that the trademark has acquired distinctiveness” through long standing and widespread recognition in the relevant industry.

Generic

Technically a subset of merely descriptive terms, generic terms are terms that are underst[ood] primarily as the common or class name for the goods or services.” (TMEP 1209.01(c)) For example, terms like PHONE, COMPUTER, GROCERY STORE, etc. as well as terms that are very descriptive” such as CARS.COM for an online car sale listing and search website. Interestingly, previously fanciful trademarks can become generic if they enter the common lexicon (e.g. ESCALATOR and ASPIRIN) though this phenomenon has become less common over time. Generic terms are completely barred from trademark registration on any Register, and can never become eligible for registration, no matter the length of time used, or notoriety of use. The idea behind this is that the USPTO does not want to give any individual or business entity a monopoly over the generic term used to identify a product or service.

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