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Trademarks are words, designs, symbols, logos, and other things that are used/associated with goods or services that identify the specific commercial source of the goods/services. COCA-COLA, APPLE, and GUCCI are just a few famous examples. If COCA-COLA is on the bottle, consumers know what to expect from the beverage in the bottle. The same for the computer/phone and the handbag for the other examples.
One of the requirements for the registration of a trademark with the U.S. Patent and Trademark Office (“USPTO”) is that the trademark be distinctive. One may go further and say that distinctiveness is necessary for a trademark to “work” as a trademark. A set of words, logo, or mark does not “work” as a trademark unless consumers “see” and understand that the trademark is identifying that specific commercial source. So, a distinctive trademark is a strong trademark that properly functions in the minds of consumers.
One way to create a distinctive trademark — one that will “work” as a trademark — is to create and use a fanciful trademark. Most trademark scholars, lawyers, and judges will identify five categories or types of trademarks. Ranging from least distinctive to most distinctive (along with an example), these are:
As can be seen, a generic trademark uses the words that are commonly used by consumers to reference an industry or a category of goods/services. These trademarks do not “work” as trademarks because they are not memorable and cannot be registered. This is true also of descriptive trademarks, which might, over time, acquire distinctiveness.
With respect to suggestive and arbitrary trademarks, these “work” as trademarks and are generally considered to be “strong” trademarks. Often, suggestive trademarks involve unusual spelling (as with our example above) or concept combinations. RITE-AID and KITCHENAID are two famous examples. Probably the most famous arbitrary trademark is APPLE, which sells computers and tech-related products.
By most accounts, fanciful trademarks are the most distinctive and are, therefore, the strongest type of trademark and the ones most easily registered with the USPTO. KODAK, PEPSI, and EXXON are three famous examples. A fanciful trademark has these characteristics:
The ARKALONT example used above has these characteristics.
Are fanciful trademarks the best? Whether a fanciful trademark is best for your business and product/service depends on the business circumstances and preferences. Suggestive or arbitrary trademarks have much to recommend. However, fanciful trademarks offer the advantages of being easily recognized and remembered, and easily distinguished from other trademarks. As with other strong trademarks, fanciful trademarks will have strong legal protections under U.S. trademark laws, particularly after registration. To ensure that your fanciful trademark is, in fact, fanciful, a comprehensive trademark search should be conducted early in the creative process.
The USPTO examiner reviewing your trademark application applies the spectrum of distinctiveness through a formal analysis. Generic terms are refused outright and cannot be registered even with evidence of secondary meaning — the term Booking.com was the subject of a Supreme Court case, USPTO v. Booking.com B.V., 591 U.S. 549 (2020), in which the Court held that a term that is generic when standing alone can be registrable when combined with a top-level domain, but the underlying principle that generic terms are categorically unregistrable remains intact. Descriptive marks may be registered on the Supplemental Register or, with evidence of acquired distinctiveness (secondary meaning), on the Principal Register. Suggestive, arbitrary, and fanciful marks are entitled to registration on the Principal Register without proof of distinctiveness.
The choice between a fanciful mark and a suggestive mark is one of the most important strategic decisions in trademark selection. Each approach involves real trade-offs:
Because a fanciful mark has no prior meaning, it carries zero consumer recognition at launch. Everything the mark communicates must be built through advertising, marketing, and consistent use over time. The investment required to build a fanciful mark into a recognized brand is substantial. KODAK, EXXON, and XEROX are billion-dollar examples. But the legal payoff is significant: fanciful marks receive the broadest scope of protection under the Lanham Act, are virtually immune from descriptiveness refusals, and are the most difficult to challenge through cancellation proceedings.
Suggestive marks hint at the nature of the product without directly describing it. NETFLIX (networks + flicks), AIRBNB (air mattress + bed and breakfast), and GREYHOUND (speed of a greyhound for bus travel) are classic examples. Suggestive marks are also inherently distinctive and registrable on the Principal Register without proof of secondary meaning. They have the additional advantage of communicating something meaningful to consumers from day one, reducing the marketing investment required to establish the connection between the mark and the product.
Before committing to any trademark — fanciful, arbitrary, or suggestive — a comprehensive clearance search is essential. The search should cover:
A clearance search conducted by experienced trademark attorneys is qualitatively different from a simple USPTO database search. Attorneys apply the multi-factor likelihood of confusion analysis from In re E.I. DuPont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973) — the “DuPont factors” — to evaluate whether prior marks pose a real risk. The DuPont factors include the similarity of the marks in appearance, sound, and meaning; the similarity of the goods and services; the channels of trade; and the degree of care exercised by purchasers.
Registration is the beginning of trademark protection, not the end. Owners of fanciful marks must:
If you have questions about trademark law, the experienced attorneys at Revision Legal can help. We represent businesses, entrepreneurs, and individuals across the country. Contact us through the form on this page, visit our trademark law practice page, or call us at (855) 473-8474.
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