Is Your Trademark Strong Enough?

Securing a trademark for yourself and your business can be a major boost that helps you separate yourself from competitors. It’s a government-certified showcase of your unique hard work. However, the US Patent and Trademark Office isn’t going to approve just any application.

USPTO officials are flooded with applications, many of which have no business ever earning an official trademark designation. If a mark doesn’t stand out in any way and has no real value worth protecting, it will fall short.

There are four “levels” of strength behind a trademark request. The four levels are:

  • Merely descriptive
  • Suggestive
  • Arbitrary
  • Fanciful

We didn’t include “generic” here because, as we noted in a previous blog, any “genericized” mark will lose trademark protection as the term has become too generic to be discerned from its field.

Merely descriptive trademarks

Merely descriptive trademarks are marks that do as the title suggests. They merely describe the item or service that the trademark represents. These trademarks are the weakest form that we’re exploring, but they can still maintain trademark protection under certain conditions.

In order for a merely descriptive trademark to be approved and survive renewal, the trademark itself must fulfill a secondary meaning beyond the item being described. This disqualifies attempts to just describe your product or use generic adjectives like best, brightest, hottest, strongest, etc. You also generally won’t get away with using unique spellings of descriptive words.

For example, let’s say you’re running an ice cream shop. “Best Ice Cream,” “Sweetest Ice Cream,” or “Tastiest Frozen Dairy” are unlikely to achieve trademark protection. However, “Custom Custard” or “Satisfying Scoop” could qualify because, despite remaining descriptive, the terms are closer to achieving the “second meaning” requirement. Real brands like So Delicious, Salt & Straw, Frozen Farmer, and Sassy Cow have achieved trademark protection by being descriptive with the second meaning qualification.

Suggestive trademarks

Suggestive trademarks aren’t far off from what we described above, but the difference is consumers have to use a little imagination to understand what the product is. These titles are indirect allusions to what the product is while suggesting something about the product itself.

These are one of the more common forms of trademarks because they keep the product and company top of mind on the market while still being worthy of protection. When you see these terms, you associate them with the product but the mark itself isn’t an exact description.

Examples of suggestive trademarks include Netflix (suggesting “flicks” on the net), Airbus (suggesting buses for the air), Coppertone (suggestive of a copper skin tone for a sunscreen company), and Rice Krispies (suggestive of a crispy rice product).

Arbitrary trademarks

Arbitrary trademarks are some of the strongest trademarks because the products are completely unrelated to the title but the title has become so synonymous with the product that trademark protection is warranted. Some of the most successful companies use arbitrary titles for their business and individual products.

These terms are at the least risk of having trademark protection ripped away in the future as the terms themselves can’t become generic in one field when the word(s) itself has a completely unrelated meaning in another field.

Apple is the perfect example of this. Apples are a fruit that has been consumed for as long as humans have walked the earth, but it’s also the name of the largest tech company in the world. Apple products are all known to be important in our daily lives, so the arbitrary trademark holds and won’t be removed as this would muddy the waters of the company’s identity too much.

Other examples of this include Tesla, Amazon, Coach, and AllBirds.

Fanciful trademarks

Fanciful trademarks are similar to arbitrary trademarks but without additional meaning. These are terms that are created exclusively for the product, company, or service being protected.

While these terms are among the strongest and will almost always be approved when the value of the mark itself is proven, they are sometimes genericized. This means the created term becomes so synonymous with the product or service that the trademark office determines there’s no longer support for protection. Examples of this include Aspirin, Linoleum, and Laundromat.

Examples of active fanciful trademarks that are still legally recognized but could become genericized are Kleenex, Xerox, Kool-Aid, and Mace.

Getting your hard work protected and secured could be all the difference for your company. At McDermott IP Law, we pride ourselves on protecting client innovation. Contact our team today if you need help navigating the trademark process.

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