Is Your Trademark Distinctive Enough To Be Protected Under Federal Law?

The purpose of a trademark is to distinguish goods/services and their source from other goods/services in the marketplace. To further that purpose, federal courts have created a sliding scale under which the degree of protection a mark receives depends on its level of distinctiveness. The five categories, in order from least distinctive to most distinctive, are: (1) generic marks, (2) descriptive marks, (3) suggestive marks, (4) arbitrary marks, and (5) fanciful marks. Below is a brief description of each category and the level of protection a trademark that falls in that category receives under federal law.

GENERIC TRADEMARKS

Generic trademarks are common terms used to name products or services, for example, a brand of computers called "computers." Generic trademarks do not qualify for trademark protection because anyone has the right to use generic words to describe the products they are selling. However, it is sometimes possible to combine the generic word with other words to create a protected trademark, such as “Apple Computers.” Other examples of generic trademarks include “lite beer” for light beer, “Convenient Store” for convenience stores, and “Polo” shirts for polo shirts.

It is important to note that trademarks that do not start as generic can become “genericized” by becoming the commonly known and used name of the relevant product. Examples of such trademarks include Aspirin, Escalator, Laundromat, Thermos, Trampoline, and Videotape.

DESCRIPTIVE TRADEMARKS

A merely descriptive trademark “describes an ingredient, quality, characteristic, function, feature, purpose, or use of the goods or services” covered by the mark and only serves to describe the product. Examples of descriptive trademarks are “Bank of America” (to describe a bank in America), “Holiday Inn” (to describe a hotel), “All Bran” (to describe cereal made of bran), and “American Girl” (to describe dolls).

Descriptive trademarks typically don’t qualify for protection unless the applicant can show “secondary meaning,” which arises when consumers have come to identify a trademark with a certain product over time. When this happens, a descriptive mark that would not have been protected originally may achieve protected status and be able to be registered. An example of a descriptive trademark that has achieved secondary meaning is “5-Hour Energy,” which is descriptive of a drink that gives you 5 hours of energy. However, consumers have come to identify “5-Hour Energy” with a specific product such that it achieved secondary meaning, so its trademark registration was allowed.

SUGGESTIVE TRADEMARKS

A suggestive trademark alludes to, or hints at, the nature or quality of the goods or services without explicitly describing them. A suggestive mark thus “requires the observer or listener to use imagination and perception to determine the nature of the goods.” Examples of suggestive marks include “Airbus” for airplanes, “Netflix” for streaming video services, “CarMax” for a used car dealership. and “L’Eggs” for pantyhose. Suggestive trademarks fall below arbitrary trademarks and fanciful trademarks in degree of trademark protection, but above descriptive trademarks.

ARBITRARY TRADEMARKS

An arbitrary trademark has a meaning that is recognized in everyday life, but that meaning is unrelated to the product or service with which the trademark is attached. Examples of arbitrary trademarks include “Camel” for cigarettes, “Apple” for computers, “Dominos” for pizza, and “Shell” for gasoline. Arbitrary trademarks are inherently distinctive and receive a high degree of trademark protection.

FANCIFUL TRADEMARKS

Fanciful trademarks are letters or numbers that have no significance other than to identify the product or service. The only function of these terms is to distinguish the source of the products with which they are associated. Examples of fanciful trademarks include “Kodak” for film, “Exxon” for oil, “Google” for online services, “Rolex” for watches, “Clorox” for bleach, “Victoria’s Secret” for women’s lingerie, “Hummer” for an off-road vehicle, and “Xerox” for copiers. Fanciful trademarks are considered the strongest and most distinctive trademarks, which are the easiest to register but can be difficult to market.