Selecting a trademark may not be easy. It may be tempting to choose a word that seems “catchy” and describes a feature or characteristic of your goods or services. However, as a general rule, terms that are merely descriptive of products and services can be difficult to protect as marks, and the more descriptive your mark is, the more difficult it may be to stop your competitors from using it.
The more distinctive a mark is, and the more well-known the mark becomes, the wider the mark’s scope of protection will be. Trademarks can generally be categorized into one of four categories
i.) Coined Marks
Coined marks (also known as a fanciful mark) are at the top of the mountain in terms of distinctiveness and strength. A coined mark has no meaning at all apart from its association with a product or service – it is a “made-up” word (or design). Examples of coined marks are XEROX® for copiers, EXXON® for petroleum products, and GOOGLE® for Web browser services.
ii.) Arbitrary Marks
Arbitrary marks are second on the scale of distinctiveness and strength. An arbitrary trademark is a word that has an ordinary dictionary meaning, but has no special meaning in relation to the goods or services to which it is applied, other than its source-identifying function. An example of an arbitrary mark is APPLE® for computers and SAMSUNG® for televisions.
iii.) Suggestive Marks
Suggestive marks are not as distinctive as coined or arbitrary marks, but may still be considered strong marks. A suggestive mark hints at some function or property of the product or service, but does not directly describe it. A consumer is required to use a degree of thought or imagination to ascertain the exact nature of the goods. Suggestive marks often comprise words that embody desirable qualities or characteristics associated with a product or service – such as efficiency, speed, accuracy, comfort or elegance. Examples of suggestive marks include MICROSOFT® for computer software, GREYHOUND® for bus services, and AIRBUS® for airplanes.
iv.) Descriptive Marks
Descriptive marks are words or designs that describe the goods and/or services. These marks are among the least distinctive and weakest marks. If the USPTO determines that a mark is “merely descriptive” then it is not registrable or protectable unless it acquires distinctiveness – generally through extensive use in commerce over a five-year period or longer. Descriptive marks are considered “weak” until they have acquired distinctiveness.
Businesses sometimes choose descriptive marks for their goods and services, believing that these marks reduce the need for expensive consumer education and advertising because consumers can immediately identify the product or service being offered directly from the mark. However, this approach can lead to marks that cannot be easily protected and may not be registrable or protectable against later users of identical or similar marks. In many circumstances, adopting a descriptive mark may end up costing more money, either due to higher costs to try to enforce such a mark, or because it may be legally necessary to stop using the descriptive mark and select a new mark. Examples of descriptive marks include COMPUTERLAND® for computer store services and VISION WORLD® for optical store services.
