Staas & Halsey LLP: How Strong Is Your Trademark?

The level of protection granted to a trademark depends on its distinctiveness. Read on to learn more.

Trademarks — and trademark infringement, generally — can be confusing to those who are unfamiliar with the legal theory that underlies trademark law, the various categories of trademarks, and how these aspects fit together in the context of trademark protection. There is enormous trademark diversity on the market, and it can be difficult for an untrained person to identify patterns in trademarks.

If you are interested in securing a trademark, or if you have any other trademark issues or questions, make sure to consult with an experienced trademark attorney at an intellectual property law firm in Washington DC.

Trademarks are distinctive marks — words, symbols, images, and phrases — that help consumers to distinguish between products. The value of a trademark is that it grants consumers the ability to identify the producer of a given item (and all the associated aspects related to that brand identity, including quality, function, and more). For example, when you go to the grocery store to purchase a bottle of orange juice, the presence of an identifiable trademark lets you choose between brands so that you can purchase the orange juice with the flavor profile you prefer.

Not all trademarks are equally strong, however. A trademark’s distinctiveness is its critical feature. The more distinctive a trademark, the stronger it tracks its function — helping consumers distinguish between products — and the more protection it is afforded by law.

Trademarks can be grouped into four categories of distinctiveness, each with varying degrees of legal protection: arbitrary/fanciful, suggestive, descriptive, and generic. Let’s take a look at each category in a bit more detail.

Arbitrary or Fanciful

Arbitrary or fanciful marks are those in which there is no reasonable relationship to be drawn between the content of the mark itself and the product. Gibberish names would qualify as arbitrary or fanciful. For example, if a sports apparel and accessories company was named Squeak, that would constitute an arbitrary or fanciful mark. A real-world example of an arbitrary or fanciful mark is the brand name “Xerox.”

Arbitrary or fanciful marks are inherently distinctive, and as a result, are granted a high level of legal protection.

Suggestive

Suggestive marks are those where the trademark has some quality that “suggests” certain aspects of the product. Suggestive marks are not wholly descriptive of the product, however. It must simply be evocative of some quality thereof. A real-world example of a suggestive mark is the bus company name “Greyhound,” which evokes speed and efficiency.

Suggestive marks are — like arbitrary or fanciful marks — inherently distinctive, and as a result, are granted a high level of legal protection.

Descriptive

Descriptive marks are those where the trademark itself actually describes various aspects of the product (characteristics, qualities, geography, origin, etc.). The description need not be particularly detailed — but it must describe a relevant aspect of the product at-issue. A real-world example of a descriptive mark is the global computer company name “International Business Machines (IBM),” which adequately describes one of the core businesses within the company.

Descriptive marks are not inherently distinctive. In order for a descriptive trademark to be granted trademark protection under United States law, it must have acquired a “secondary meaning” from the consumer public. In determining whether a descriptive mark has acquired secondary meaning, a number of factors will be considered, from consumer opinions measured by survey to the advertising of the mark.

Generic 

Generic marks are not inherently distinctive and, further, cannot acquire secondary meaning. A generic mark is essentially a broad description of the category of a particular product. For example, if you founded a table-manufacturing company with the brand name “Table,” that would constitute a generic mark and would not be protectable. On the other hand, if you founded a chair-manufacturing company with the brand name “Table,” then the mark would likely be considered suggestive and would be inherently distinct and protectable.