Mark strength is a measure of the distinctiveness of a trademark and can be represented on a linear scale, or as we call it, the Trademark Strength Spectrum. At one end of the scale are the strongest and most distinctive trademarks, such as arbitrary and fanciful marks. At the other are suggestive marks and descriptive marks.
The higher a proposed mark is on the scale, the more likely it is to receive federal trademark registration. In order to receive the benefits of trademark registration, care should be taken to select a mark that is high on the scale below.
Arbitrary Mark
An arbitrary mark is a common term used in association with goods dissimilar from that term. For example, APPLE when used in association with computers and AMAZON when used in association with the sale of books are arbitrary trademarks because those terms do not describe or suggest the goods or services sold thereunder.
Fanciful Mark
A fanciful mark is a created term that, other than as its use as a trademark, has no meaning in ordinary language. For example, the term Kodak is a fanciful mark because it has no meaning in the English language other than as an indicator of source for the goods and services of the photography company.
Suggestive Marks
Suggestive marks are marks that indicate the nature, quality, or characteristics of the goods or services offered under the mark. For example, the term Greyhound is a suggestive trademark because it suggests a quality or characteristic of the services provided, namely, that the bus service is as fast as a greyhound.
Descriptive Marks
Finally, descriptive trademarks are trademarks that directly describe the goods or services, or a characteristic of the goods or services, sold under the trademark. For example, the mark APPLE PIE, when used in association with scented candles, is descriptive because it directly describes a characteristic of those candles, specifically, that have an apple pie scent.
However, some descriptive marks may still qualify for trademark registration under Section 2(f).
These issues should be considered when determining whether to apply for trademark registration, or even better, before significant investment is made into building a brand. Revision Legal’s experienced trademark attorneys regularly assist companies in performing trademark clearances prior before making a final selection on a name, logo, or slogan. To learn more about Revision Legal’s trademark services, click here.
Understanding the Trademark Strength Spectrum is not merely an academic exercise. It has direct, practical consequences for whether your mark will be registered, how easy it will be to enforce, and how much protection it will actually provide your business. The USPTO applies the distinctiveness framework rigorously when examining trademark applications. A mark on the weaker end of the spectrum faces a far higher risk of rejection and, even if registered, will provide narrower protection against infringers.
Fanciful and arbitrary marks sit at the top of the Trademark Strength Spectrum, and for good reason. Because they bear no descriptive or suggestive relationship to the underlying goods or services, they are inherently distinctive. The USPTO treats them as registrable without any showing of acquired distinctiveness (secondary meaning).
Beyond registrability, the practical enforcement benefits of arbitrary and fanciful marks are significant. Courts are more willing to find likelihood of confusion when a strong, distinctive mark is used in proximity to a similar mark. In Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961), the court identified the strength of the plaintiff’s mark as one of the central factors in the likelihood of confusion analysis. A strong, arbitrary mark commands a broader zone of protection across a wider variety of goods and services than a descriptive mark could ever achieve.
Well-known examples of fanciful marks include XEROX (for photocopiers), KODAK (for photographic film and cameras), EXXON (for petroleum products), and HÄAGEN-DAZS (for ice cream). Each of these marks is a coined term with no meaning outside of its trademark use—which is precisely why they are so powerful and why consumers immediately associate them with a specific source.
Suggestive marks are inherently distinctive and therefore registrable without a showing of secondary meaning, but they are weaker than fanciful or arbitrary marks because they hint at the nature of the underlying goods or services. The classic test for whether a mark is suggestive rather than descriptive is whether the consumer must exercise imagination and mental gymnastics to connect the mark to the goods. If that imaginative leap is required, the mark is suggestive. If the connection is immediate and direct, the mark is descriptive.
Examples of suggestive marks include COPPERTONE (for suntan lotion—suggestive of tanning, but not directly describing the product), NETFLIX (for streaming services—suggesting a network of films but not directly describing the service), and MICROSOFT (for computer software—suggesting microcomputer software but coining a new term). Suggestive marks are a good choice for businesses that want a mark that is both memorable and meaningful to consumers without being susceptible to a descriptiveness rejection at the USPTO.
A purely descriptive mark—one that directly describes the goods or services or a characteristic of them—is not registrable on the Principal Register without a showing of acquired distinctiveness (also called secondary meaning) under Section 2(f) of the Lanham Act, 15 U.S.C. § 1052(f). Secondary meaning exists when, in the minds of the relevant consuming public, the primary significance of the mark is as a source identifier rather than as a description of the goods or services.
Proving secondary meaning requires substantial evidence of long and exclusive use of the mark in commerce. The USPTO considers factors including the length and exclusivity of use, the amount of advertising expenditure, consumer declarations, sales volume, and direct evidence of consumer association. Descriptive marks that lack secondary meaning may be registered on the Supplemental Register, which provides some benefits but does not carry the same legal presumptions as a Principal Register registration.
Generic terms—the common descriptive name for a category of goods or services—can never function as trademarks and are not registrable under any circumstances. No amount of use, advertising, or secondary meaning can transform a generic term into a protectable trademark. Generic terms must remain available for all competitors to use in describing their products.
Generic terms can also cancel existing trademark registrations. The process by which a formerly distinctive mark becomes generic is called genericide. Famous examples include ASPIRIN (formerly a trademark of Bayer, now generic in the United States), THERMOS (generic in the United States), and ESCALATOR (generic in the United States). Companies with strong trademarks must actively police their marks to prevent generic use—this is why companies like Google and Band-Aid regularly run campaigns reminding the public that their marks are brand names, not generic terms.
Choosing the right mark on the Trademark Strength Spectrum is one of the most important branding and legal decisions a business will make. The attorneys at Revision Legal regularly assist clients in selecting strong, registrable marks and conducting the trademark clearance searches necessary to assess the legal landscape before making a final brand decision. Contact us today to discuss your trademark needs.
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