Choosing a brand name can be hard! With so many names that are already in-use, finding a name that is available can pose as a genuine challenge to new companies. While the process of clearing a new trademark for use requires a bit of our “secret sauce”, there is an important principal that new companies can leverage to help improve their odds.
This principal is called the “Spectrum of Distinctiveness”, which states that not all trademarks are created equal. That is, some marks (marks that are more distinct) are given broader protection than other marks (marks that are more descriptive).
When moving across this spectrum, there are five buckets that your trademark can fall into:
The further to the right that your mark falls on this chart, the better. These five buckets will now be explored more in depth:
1. Generic Marks
Generic marks are not eligible for trademark protection. These marks consist of words that are the generic term of the goods and/or services being offered by the company.
For example, if you are a company that sells chairs and you are applying for protection on the trademark “CHAIR”, the USPTO will find your mark to be generic, and will deny registration. This makes sense because if someone were to have exclusive rights to use the word CHAIR in connection with the sale of chairs, other chair manufacturers would have a tough time describing their goods.
Additionally, the trademark CHAIR does not identify a unique source of origin, which is the essence of what a trademark is supposed to do. According to the Trademark Manual of Examining Procedure (TMEP), “A generic term also does not meet the statutory definition of a mark because it is incapable of denoting a unique source…generic terms, by definition incapable of indicating source, are the antithesis of trademarks, and can never attain trademark status.”
In some instances, a trademark that is not the generic term for a product becomes the generic term for that product. In such instances (referred to as Genericide), trademark protection can be cancelled for previously non-generic marks.
2. Descriptive Marks
Under this bucket fall marks that are descriptive (but not generic) of the goods and/or services being sold under those marks. Marks that are “merely descriptive” are not immediately eligible for registration on the Principal Register (the Supplemental Register is still a possibility). However, after a trademark has been used continuously for 5 years, a merely descriptive mark can become eligible to be filed on the Principal Register.
An example of a merely descriptive mark would be QUALITY CHAIRS used in connection with the sale of chairs. In this instance, quality chairs are descriptive of the goods being sold…chairs. As such, an Examining Attorney at the USPTO would issue a rejection for someone attempting to apply for that mark. However, unlike generic marks, it is still possible to register descriptive marks. In addition to the reasons lists above, a descriptive mark can become registered on the Principal Register if it has acquired what is known as “secondary meaning.”
3. Suggestive Marks
Suggestive marks are registerable on the Principle Register without proof of secondary meaning. To qualify as a suggestive mark, a mark must require the use of imagination and some thinking, by a consumer, to figure out what goods and/or services are being sold under the mark.
A prime example of a suggestive mark is NETFLIX. There, one can probably guess that films or “flicks” are being transmitted over the internet. The exact nature of this transfer is unclear (Is it selling or renting movies? Are TV shows included? Etc.) and therefore the mark is suggestive of what is being offered.
For this measure, the trademark office often also looks for incongruity as a benchmark for distinguishing between descriptive or suggestive. The TMEP uses the example of the mark “FRANKWURST” where the office held that the mark was “not merely descriptive for wieners, the Board finding that although "frank" may be synonymous with "wiener," and "wurst" is synonymous with "sausage," the combination of the terms is incongruous and results in a mark that is no more than suggestive of the nature of the goods)”
4. Arbitrary Marks
Arbitrary marks consist of a well-known standard term, that is being used in connection with entirely unrelated goods and/or services (thus, making the use of the mark “arbitrary”). The most commonly cited example of an arbitrary trademark is for APPLE. As you know, Apple does not sell any kind of fruit, wine, or food (which would be render the use of APPLE as either generic or descriptive). However, because Apple sells computers and software, which have nothing to do with the fruit, their use of APPLE is deemed arbitrary and is afforded very strong trademark rights.
5. Fanciful Marks
Fanciful marks (sometimes referred to as “coined mark”) consist of words that did not exist prior to its use as a trademark. These are the very best types of trademarks, and we always advise clients to try to fall into this bucket when selecting a mark.
Two examples of fanciful or coined marks are KODAK and XEROX; both which had no meaning prior to the formation of those companies. The only purpose of these words is to identify the product of their brand, lending credence to the statement that fanciful marks are the strongest. That is, the general public to be able to see the word KODAK and will have no connection with anything aside from the Kodak company.
Conclusion
The spectrum of distinctiveness is a helpful tool to have by your side when brainstorming names for your company or trademark for your product brand. Remember, fanciful/coined, arbitrary, and suggestive marks are often collectively referred to as “inherently distinctive” marks, and are registerable on the Principal Register without proof of secondary meaning.
The closer you are to a fanciful or coined mark, the stronger your rights are and the more likely your trademark will be registered. The closer you are to the generic side, the weaker your rights are and the more hurdles you will have to overcome for registering your mark.
Want to learn more? Feel free to contact us at contact@mgmiller.legal or (646) 603-6945.