Trademarks are valuable business assets. Trademarks help your business grow by creating customer loyalty and awareness of your products and services. Customer loyalty and awareness help a business maintain its market share. Repeat customers are an important key to success. Further, if created and nurtured properly, trademarks can help your business expand into new markets and into new lines of products/services by “bringing” loyal customers to your new product line and/or market.

Legal scholars and officials at the US Trademark Office recognize five different types of verbal trademarks or service marks:

• Generic
• Descriptive
• Suggestive
• Arbitrary
• Fanciful

Generally speaking, generic trademarks cannot be registered with the Trademark Office unless, over time, the generic trademark comes to have what is called “secondary meaning.” A generic trademark is one that does not function as a trademark. By its nature, a generic trademark does not — cannot — “connect” in the minds of consumers a commercial source of goods with a product or service. A generic trademark either identifies a broad type of product/service, like LAW FIRM, or uses common words, like TRIANGLE or BLUE. Since it does not function as a trademark, a generic trademark has no strength.

By contrast, a descriptive trademark is stronger and CAN function as a trademark, but is still considered a weak type of trademark. Usually, a descriptive trademark must be given time to create and establish secondary meaning in the minds of consumers. As the name suggests, a descriptive trademark describes what products or services are being offered for sale or, sometimes, describes a location such as NEW YORK DAIRY.

A suggestive trademark functions better than a descriptive trademark, and is stronger since it is easier for consumers to “bring to mind” the “connection” between the mark and the product/service. This sort of trademark implies what goods or services are being offered for sale, but does not overtly describe them. Good examples include AIRBUS and KITCHENAIDE. Neither trademark describes a product or service directly, but evokes a sense of what is being sold. In the case of AIRBUS, it is air transportation and, with KITCHENAID, what is evoked is a sense of devices that are helpful for cooking. The KITCHENAID trademark is owned by the WHIRLPOOL corporation which is another good example of a suggestive trademark.

The strongest trademarks are arbitrary and fanciful. An arbitrary trademark is one where the words/phrase have no normal relationship to the product or service. The trademark APPLE is probably the most famous modern example using a “food” word in relation to computers. Trademarks based on surnames often fall into this category like TIFFANY.

Fanciful trademarks are one that use invented words like GOOGLE and XEROX. Fanciful trademarks are often considered to be the strongest type of trademark.

For more information or if you have questions about creating and registering a trademark or if you are facing trademark litigation, contact the trademark litigators at Revision Legal at 231-714-0100.

Registration Standards for Each Type of Trademark

Each level of trademark distinctiveness carries different implications for registration and protection. Generic marks cannot be registered at all. Once a mark becomes generic, it enters the public domain and cannot be reclaimed — ELEVATOR, ESCALATOR, ASPIRIN, and ZIPPER are all former trademarks that became generic. Descriptive marks may be placed on the Supplemental Register while the mark’s owner works to build secondary meaning. After demonstrating that the consuming public associates the mark with a single commercial source — typically requiring evidence of at least five years of substantially exclusive and continuous use under 15 U.S.C. § 1052(f) — the mark can be moved to the Principal Register. Suggestive, arbitrary, and fanciful marks are inherently distinctive and presumptively registrable from the outset.

The Suggestive Mark: Legal Strength Without Describing the Product

Suggestive marks occupy a legally important position on the distinctiveness spectrum. Unlike descriptive marks, suggestive marks are inherently distinctive — they require no secondary meaning for registration. The line between suggestive and descriptive is frequently litigated before the Trademark Trial and Appeal Board (TTAB). The key question is whether the mark requires “imagination, thought, or perception” to connect it to the goods or services. JAGUAR for automobiles is suggestive (it evokes speed and power but does not describe a car). SPEEDY MUFFLER KING for muffler installation services was held to be descriptive because it directly communicates what the business does and how well it does it.

Trade Dress: A Sixth Category Worth Knowing

Beyond the five classic types of verbal marks, trademark law also protects “trade dress” — the overall commercial image of a product or business. Trade dress includes product packaging, product configuration (shape), restaurant decor, website design, and other visual elements that identify a commercial source. The Supreme Court clarified in Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205 (2000), that product design trade dress is never inherently distinctive and always requires secondary meaning — a higher bar than applies to packaging trade dress or verbal marks.

Choosing the Right Trademark Type for Your Business

Descriptive marks are intuitive — they tell customers immediately what the product is — but they are legally weak, slow to protect, and vulnerable to challenges. Fanciful and arbitrary marks require more marketing investment to build consumer recognition, but once that recognition is built, the marks are legally powerful and far more difficult for competitors to challenge or cancel. The most successful brands often combine a fanciful or arbitrary house mark with descriptive product names for specific lines. Contact the trademark attorneys at Revision Legal at 231-714-0100 to discuss the right trademark strategy for your brand.