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In general, there are five types of word or phrase trademarks that are on a spectrum of strength and distinctiveness: fanciful, arbitrary, suggestive, descriptive, and generic. Fanciful word trademarks are made-up words like EXXON and PEPSI. The words have no other meaning than the association that the words have with the product or service being sold. Arbitrary word trademarks are known words/phrases that are associated with products or services in an arbitrary manner. APPLE is a famous example of an arbitrary word trademark where fruit is used for computer and tech products.
A suggestive word/phrase trademark is a word or phrase that suggests the nature or quality of the goods or services being provided but that does not explicitly identify the type or quality of goods or services. AIRBUS, KITCHENAID, and COPPERTONE are good examples. In each case, the word trademark suggests the product/service or some quality of the product/service without precise identification. A suggestive trademark is distinct from a descriptive trademark which simply describes the product/service and other qualities. A famous descriptive trademark is AMERICAN AIRLINES. The service — air travel — and the location of the company are described in the trademark.
There are several advantages of creating a suggestive trademark. First, a suggestive trademark is strong and distinctive. This means that a suggestive trademark will function as a trademark. A trademark functions when it creates — in the minds of the consuming public — an association between the trademark and the goods/services being sold or provided. As a fanciful trademark, EXXON functions as a trademark because the only meaning for the word/phrase is an association with a commercial enterprise that sells petroleum products. A suggestive trademark functions in the same way but is less strong than a fanciful trademark.
In addition, a suggestive trademark can become quickly established in the minds of consumers. This is because the word/phrase usually has a somewhat uncommon spelling or relationship to the product/service. As such, an association is easily triggered. For the same reasons, a suggestive trademark can be created more easily and can avoid being confusingly similar to already-existing trademarks. A trademark is the exclusive intellectual property of its owner. Thus, new trademarks are barred from use if they are the same as, or confusingly similar, to established trademarks.
Finally, a suggestive trademark has the advantage of being more easily registered with the US Patent & Trademark Office and can be placed on the Principal Register (rather than the Supplemental Register). Registration is important to provide the trademark owner with the full legal protections that are provided by U.S. law. The USPTO has detailed rules with respect to whether a proposed new trademark can be registered. One rule states that a trademark cannot be registered unless it is strong, distinctive, and functions as a trademark. By USPTO rules, a suggestive trademark satisfies those requirements. Thus, a suggestive trademark can be immediately registered (as long as the other rules are also satisfied).
Contact the Trademark Attorneys at Revision Legal For more information, contact the experienced Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.
The legal strength of a suggestive trademark was authoritatively established in Abercrombie and Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976). Judge Friendly’s spectrum places suggestive marks firmly in the inherently distinctive category, meaning they qualify for immediate federal registration on the Principal Register without any requirement to prove acquired distinctiveness or secondary meaning. This is a significant advantage over descriptive marks, which must spend years in the marketplace acquiring secondary meaning before they can achieve the same level of legal protection.
Courts define a suggestive mark as one that requires imagination, thought, or perception to reach a conclusion as to the nature of the goods or services. COPPERTONE — suggesting both a sun and a tan — requires a consumer to mentally connect the concepts to understand the product’s function. CHICKEN OF THE SEA for canned tuna requires the same imaginative leap.
Applying the imagination test is not always straightforward. The boundary between descriptive and suggestive is frequently contested in USPTO examination and in TTAB proceedings. The USPTO may reject a proposed mark as descriptive, requiring the applicant to argue for suggestive status or to seek placement on the Supplemental Register. Applicants bear the burden of showing that their mark is suggestive rather than merely descriptive.
Courts consider several factors in applying the imagination test, including: how directly the term describes the goods or services, whether competitors would need to use the term to describe their own similar products, dictionary definitions, and how the term is used in the relevant industry. A term that is suggestive for one product category may be descriptive for another.
A federally registered suggestive trademark is entitled to the full suite of Lanham Act protections. After five years of continuous use in commerce following registration, the owner may file a Declaration of Incontestability under 15 U.S.C. section 1065. An incontestable registration cannot be challenged on the ground that the mark is merely descriptive — one of the most common grounds for challenging trademark registrations. This makes incontestability a highly valuable status.
Because suggestive marks are typically creative variations on descriptive terms, competitors may attempt to adopt similar marks. Monitoring the USPTO’s Official Gazette for new trademark applications in relevant classes, watching domain name registrations, and conducting periodic marketplace searches are essential to catch potential infringers early. Once a competitor has established use of a similar mark, it becomes much harder and more expensive to force them to change.
The Trademark Attorneys at Revision Legal assist businesses at every stage of the trademark lifecycle — from brand development and clearance searches to registration and enforcement. If you are developing a new brand or evaluating an existing trademark portfolio, contact us at (855) 473-8474 today.
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