How do you know if you came up with a strong trademark?
There are 5 degrees of strength for trademarks: generic, descriptive, suggestive, arbitrary, fanciful.
Watch the video and discover what each of them is:
Not all brands are created equal. Some brand names are inherently stronger than others. THAT depends on where your brand is on the so-called spectrum of distinctiveness—going all the way from generic, descriptive, to suggestive, arbitrary, and fanciful marks. Watch this video to better understand the principles behind distinctiveness so you can pick a strong brand for your new product or service or evaluate whether your current brand is inherently strong.
I'm Andrei Mincov, I'm the founder of Trademark Factory, and in this video, I'm going to walk you through the spectrum of distinctiveness for trademarks.
First, I will explain the general principles and then I'm going to give you specific examples for two fictitious products and services. So let's just jump right into it. So there are five buckets on the spectrum of distinctiveness that your brand and your trademark can fall into. Since this is a spectrum, there will be some in-betweens, but the Trademarks Office would need to decide which of these buckets best fits you in order to determine how to legally treat your trademark.
Spoiler alert: there are buckets you NEVER want your trademark to fall into. OK. The first bucket is GENERIC trademarks. This is the weakest form of a brand. In most cases, it's not a brand AT ALL. It's just a common name that everyone uses for the particular product or service that you offer. You cannot trademark brands that are generic because if you were allowed to own a monopoly over a generic name, it would mean that nobody else could sell versions of the same product or service—simply because, in order to do so, they'd have to stop calling their products and services what they actually are.
For example, if you sell ice cream, you can't go and trademark the term "ICE CREAM". If you sell bicycles, you can't trademark the word "BICYCLE". If you are a fitness trainer, you can't trademark the phrase "FITNESS TRAINER". And so on.
Some brands start out as regular brands and THEN become generic through use. I'm going to give you a few examples of brands that suffered from GENERICIDE that may surprise you because these names that are now part of our common language once used to be unique brands for innovative products offered by a single business. Ready?
Linoleum. It was actually the very first trademark to have ever become generic in 1878. Other famous examples include App Store, Aspirin, Cellophane, Dry Ice, Escalator, Heroin, Kerosene, Kleenex, Laundromat, Videotape, and Zipper. Google is rapidly approaching this status as well since everyone seems to be “googling it”. Google has recently survived a genericness challenge in the US Supreme Court, but it doesn't guarantee that it won't become generic in the near future.
The second bucket is for CLEARLY DESCRIPTIVE marks. These marks are a step up from generic marks in that they no longer use the common word for the product or service itself, however, they use words that do nothing other than clearly describe a feature or characteristic of the product or service. For example, if you sell printers, you can't trademark the word "COLOR". If you sell legal services, you can't trademark "FLAT FEE".
In most countries, you would not be able to trademark clearly descriptive marks. In the U.S., however, you may be able to trademark your clearly descriptive trademark on the Supplemental Register. We have a separate video about the Supplemental Register. Make sure you watch that.
The reason the Trademarks Office does not like clearly descriptive trademarks is that if you were allowed to own a monopoly over such marks, it would mean that nobody else could sell their versions of products or services with the same features or characteristics—simply because in order to do so, they'd have to stop referring to these features and characteristics by their common names.
The crucial difference between generic and clearly descriptive brands is that with clearly descriptive brands, in addition to possibly being able to get them registered on the Supplemental Register in the U.S., you can actually get them registered on Principal Register in the U.S. and just registered everywhere IF you can prove that your brand has acquired distinctiveness. This means that you can prove that most people in the market for your products or services when they hear or see your brand, think of YOUR products and services, not just ANY products or services with the same features.
Here are a couple of examples of clearly descriptive marks that acquired distinctiveness: NATIONAL CAR RENTAL, KENTUCKY FRIED CHICKEN, AMERICAN AIRLINES, PAYLESS SHOES. Initially, these names are clearly descriptive, but because of their market reach, they became proper trademarks for their owners. Quick tip: it could be very difficult and expensive to prove that your clearly descriptive mark has acquired distinctiveness. And with more and more trademarks being filed around the world every year, it's getting more and more difficult to get to that level.
The third bucked is for SUGGESTIVE marks. They are a step up from descriptive marks. They ALLUDE to features and characteristics of your products and services but in a much more subtle way. Here are just a few examples of suggestive marks: "BED, BATH & BEYOND", "PHOTOSHOP", "SCANSNAP", and "QUICKBOOKS".
You can sort of figure out WHY they chose that particular name, but it's not like them having this particular name limits the freedom of their competitors to sell their products and services—as long as they use different names. And it's precisely because they don't limit their competitors' freedom, suggestive marks are trademarkable.
So here's the kicker. Sometimes, the line between clearly descriptive and suggestive marks is very murky. It often boils down to an argument between you and the Trademarks Office. It is often subjective and inconsistent. Trademark Factory is a great example. We got the brand TRADEMARK FACTORY trademarked in Canada, the US, European Union, Brazil, Mexico, Russia, and New Zealand whereas China and India refused registration as they thought the mark was descriptive.
The fourth bucket is ARBITRARY marks. Arbitrary marks are dictionary words used for products and services that have nothing to do with the words. The most famous example must be APPLE, as in the computer, phone, and software company. While "apple" is a dictionary word, Apple is not in the business of selling apples. For their products and services, "Apple" is an arbitrary mark. Another example is "ADOBE". Again, they sell software, not mud bricks. For software, "Adobe" is an arbitrary mark. CANON for cameras. Canon cameras do not shoot balls to destroy enemies' fortresses. That's why the name is arbitrary.
DOMINOS may be a dictionary word, but it's an arbitrary mark for pizza restaurants. Chrome is a dictionary word, but it has nothing to do with web browsers. Finally, "CAMEL" for cigarettes. It's not that camels are well known for something that has anything to do with smoking. That's why it's an arbitrary mark. Because they have nothing to do with the products and services they are supposed to cover, arbitrary marks are considered to be inherently strong marks.
Finally, the fifth bucket is for FANCIFUL marks. Fanciful marks are invented marks that have no meaning other than to identify specific products or services. Kodak means nothing outside of it being a photography brand. Twitter means nothing outside of it being the name of a left-wing social-media platform. Exxon means nothing outside of it being an oil company. Cisco, Walmart, Marlboro, Pepsi, Audi, and Ikea are all good examples of fanciful marks.
So these are the five main buckets but know that many marks live somewhere between the suggestive, arbitrary, and fanciful buckets. They may not be completely arbitrary or fanciful but it's not that they necessarily point to a feature or a characteristic of products and services. YouTube, Hewlett-Packard, Smith & Wesson, DreamWorks, Uni-Ball are all good examples.
The reason we have the 5 buckets is to make it easier for businesses (and trademark attorneys) to identify which of the buckets your brand is closer to. I hope this makes sense. So before we finish this off, let me give you two situations. Let's say you make pencils. Right, your business is you make and sell pencils. A generic name for your products would be... PENCIL.
A clearly descriptive name for your products would be... SHARP or ALWAYS SHARP or something like that. A suggestive name could be DRAWSTIX with an X at the end. You see, misspelling a name doesn't make it fanciful. It's still examined as if it was spelled properly. An arbitrary name for your pencils could be "PIZZA". Or "HELICOPTER". Or "BANANA".
An example of a fanciful name for your pencils could be BELLION, or QRSTPUV, or GRX27. Or here's the second situation. You run an accounting firm. A generic name would be... ACCOUNTING. A clearly descriptive name would be ON-TIME ACCOUNTING, or simply ON-TIME. A suggestive name could be COUNTING BEANS or COUNTING BEANS ACCOUNTING SERVICES. An arbitrary name for accounting services could be PIZZA ACCOUNTING or ZEBRA ACCOUNTANTS or LIPSTICK CHARTERED ACCOUNTANTS.
You see, adding the word "accounting" or "accountants" doesn't change the nature of the mark, because it would be a part of the mark you'd have to disclaim anyway since it's a generic word for the services you offer. So the only parts that remain, Pizza, Zebra, or Lipstick in this case, are arbitrary since they have nothing to do with accounting services. And finally, fanciful names for accounting services could be Colang, Tremulbite, or Bonkoto ACCOUNTING. Again, these are words that mean nothing, except that they are supposed to identify your brand.
So once again, the final summary. Generic marks are impossible to trademark. Descriptive marks are difficult to trademark and if you get one, you will have a hard time enforcing it against your competitors, since descriptive marks are inherently weak. Suggestive marks are doable, but often you need to work on convincing the Trademarks Office that your mark is suggestive, rather than descriptive.
Arbitrary and Fanciful marks are the strongest to enforce and the easiest to trademark. So if you're just trying to come up with a new brand for your business, your products, or services, have that in mind. Get a brand you can own. Get a brand you can trademark. And if you're serious about protecting your brand, use Trademark Factory® to help you register it as a trademark.
First thing we will do is prepare a registrability opinion based on whether your trademark is distinctive enough and whether there are any other previously filed or registered trademarks that would stand in your way. If we find any concerns with your first choice, you can always get a full refund or do what most of our clients do in these situations: you can keep sending us, at no extra charge, your other ideas for the brands you have in mind until you pick a brand you love that we tell you is trademarkable.
So once again, if you're serious about owning your brand, use Trademark Factory. We're the only firm in the world that will help you trademark your brand with a guaranteed result for a guaranteed budget without you wasting your time and your money on trademarks that don't go through.
Disclaimer: Please note that this post and this video are not and are not intended as legal advice. Your situation may be different from the facts assumed in this post or video. Your reading this post or watching this video does not create a lawyer-client relationship between you and Trademark Factory International Inc., and you should not rely on this post or this video as the only source of information to make important decisions about your intellectual property.