Picking a mark to represent your brand can be one of the most important decisions you make. Think about the brands we see everyday. Apple. Coca Cola. Microsoft. These are immediately identifiable both with the company and the products they produce.
Just how strong is your trademark?
On one end of the spectrum, are descriptive or generic marks. These are the weakest marks, and either can’t be trademarked, or require that the mark acquire secondary meaning first.
Proceeding by increased strength are suggestive, arbitrary, and fanciful terms. Each has it’s own requirements for trademark registration, with fanciful being the strongest of all marks and most likely to receive trademark registration.
The benefits to trademark registration are numerous. In order to receive the benefits of trademark registration, care should be taken to select a mark that is high on the scale below.
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.
You can see each type of trademark strength, plus examples, in the infographic below. If you’re in the branding stages of your company, or considering a rebrand, keep it handy! You’re going to use this guide for reference as you develop ideas to identify your brand.
Trademark law organizes marks into five categories based on their inherent distinctiveness. Where your mark falls on this spectrum determines whether it can be registered at all, how easily it registers, and how broadly it will be protected when challenged. Understanding these categories before committing to a name or logo can save years of legal trouble and significant expense.
A generic term is the common name for the goods or services themselves. “Apple” for apples, “Beer” for beer, “Computer” for computers. Generic terms cannot function as trademarks because they are the only way competitors can describe what they sell. No business can monopolize the language of commerce. The USPTO will refuse to register a generic mark, and a registered mark that later becomes generic loses its protection through the doctrine of genericide—a fate that befell ASPIRIN, THERMOS, ESCALATOR, and CELLOPHANE.
A descriptive mark directly describes a characteristic, quality, feature, function, or purpose of the goods or services. COLD AND CREAMY for ice cream, SPEEDY MUFFLER for exhaust repair services. The USPTO will refuse registration of merely descriptive marks under Section 2(e)(1) of the Lanham Act unless the applicant demonstrates acquired distinctiveness, also called “secondary meaning.”
Secondary meaning is established when consumers associate the descriptive term primarily with the applicant’s business rather than the underlying characteristic it describes. Proving secondary meaning requires evidence of long use, advertising expenditures, consumer declarations, and sales figures. Five years of substantially exclusive and continuous use creates a rebuttable presumption of secondary meaning under 15 U.S.C. § 1052(f). Even then, descriptive marks receive narrower protection because competitors legitimately need to use descriptive language.
A suggestive mark requires imagination, thought, or perception to connect the mark to the nature of the goods or services. NETFLIX suggests streaming entertainment but does not describe it. COPPERTONE suggests a suntan but requires a mental leap. GREYHOUND for bus transportation conjures speed without stating it. Suggestive marks are inherently distinctive and registrable without proof of secondary meaning. They occupy a productive middle ground: distinctive enough to be broadly protected, yet evocative enough to have marketing value.
An arbitrary mark is a real, known word applied to unrelated goods or services. APPLE for computers, AMAZON for retail, SHELL for petroleum products. Because the word has no descriptive relationship to the goods, it is highly distinctive and receives broad protection. Courts readily find that similar-sounding arbitrary marks create a likelihood of confusion, and the registration scope is correspondingly wide.
Fanciful marks are invented words with no prior meaning: KODAK, XEROX, HÄAGEN-DAZS (a made-up name with no meaning in any language), SPOTIFY, VERIZON. Because these words exist only as trademarks, they are the strongest possible marks—instantly distinctive, broadly protectable, and essentially impossible for a competitor to claim they need to use. Fanciful marks tend to become among the most valuable corporate assets a company owns.
Mark strength does not just determine registrability—it shapes enforcement. Under the likelihood of confusion analysis established in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973), a famous or strong mark is entitled to a broader scope of protection than a weak or descriptive mark. The owner of APPLE for electronics can prevent a wider range of confusingly similar marks than the owner of a descriptive term like VISION CENTER for optometry. Two businesses can make identical investments in building a brand, and the one with the inherently stronger mark will have far more legal leverage against imitators.
Before investing in marketing, product development, or a website around a name or logo, consult a trademark attorney. The analysis should cover: (1) where your proposed mark falls on the distinctiveness spectrum; (2) whether the mark is registrable as proposed or needs modification; (3) whether any existing marks create a likelihood of confusion risk; and (4) what strategy will maximize the scope and longevity of your protection. The right analysis before launch prevents far more expensive problems after. Contact the trademark team at Revision Legal. Reach out today.
Strong trademarks compound in value as they age. A fanciful or arbitrary mark that consumers associate exclusively with your business creates an exclusive mental real estate that competitors cannot occupy through legitimate means. This exclusivity has measurable financial value—brand valuations, licensing revenues, and acquisition premiums all reflect it.
In contrast, a business built around a descriptive or generic mark faces perpetual legal vulnerability. Competitors can use similar descriptive language without infringing, limiting your ability to enforce. The mark may never achieve incontestable status if its descriptiveness is challenged. And in any acquisition, buyers and their counsel will discount the IP value of a weak or descriptive mark substantially.
Trademark rights are not self-executing. Once you obtain a registration, you must actively police it. Monitor the USPTO’s trademark publication database for new applications that might conflict with your mark and file timely oppositions when they do. Monitor the marketplace for unauthorized uses and send cease-and-desist letters consistently. Failure to police can be used against you in future infringement litigation—a court may find that a trademark owner who tolerates widespread infringement has implicitly weakened the mark or abandoned its rights in certain uses.
The strongest marks are those that are both inherently distinctive and actively enforced. Apple sues infringers. Google polices generic use of its name in the press. These companies invest in trademark protection not because they enjoy litigation, but because the financial stakes of losing their marks are enormous. Your business may never face that scale of challenge, but the principle is the same: a trademark is only as strong as the commitment behind it.
If you are at the branding stage of your business, or are considering a rebrand to strengthen your trademark position, contact the trademark attorneys at Revision Legal. We help clients choose marks that can be registered, enforced, and built into lasting brand assets. Reach out today.
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