What Are Generic, Descriptive, Suggestive, Arbitrary, and Fanciful Trademarks?

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 are.

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TRANSCRIPT

There are 5 degrees how trademarks are measured in terms of their strength. Some of them are registrable, and some of them are not. So let’s go from the least registrable towards most registrable.

Least registrable trademarks are generic trademarks. So basically, a trademark that is simply the common name for the product or the service is called generic. So If I am selling pens, the word “Pen” would be generic if somebody wanted to trademark that. Or phones, so if I want to trademark the word “Phone” if I am selling phones, I’d be denied because it is generic. If I am selling cars I can’t trademark the word “Car.” If I am selling the trademarking services, I can’t register the phrase “Trademarking services”, or just “Trademarking,” or “Trademark.”

Slightly above that are descriptive trademarks. Descriptive trademarks are more than just naming the product but they do nothing more than tell the market about certain characteristics, or features, or benefits of your product or service. So if you’re selling printers, you can’t trademark the word “Color,” because that’s the feature of your printers. Or if you’re selling accounting services, “Timely Accounting Services” would be a descriptive trademark. It is not generic—it would be generic, if it had been simply “Accounting,”—because you’re adding something to it, but what you’re adding is only a description of the characteristic of your product or service. So “Timely Accounting Services” or “Pure Gold Bracelets”... Again, the name of the product is “Bracelets”—it’s generic; “Gold”—that’s descriptive; “Pure Gold”—still descriptive.

Above that there are suggestive marks. Suggestive marks are those that give the customer some idea about your product or service, but they don’t just describe a main feature, or main characteristic, or one of the main features or characteristics, in a way that adds nothing to the trademark in terms of identity. So the good example here would be “Trademark Factory®”. When you hear the phrase “Trademark Factory”, you know that what we offer is trademarking services, but really, the word “Factory” does not tell you exactly how we are different from others, how are we better than others, it doesn’t tell you anything except that in some shape or form, we offer trademarking services. That’s a suggestive mark.

Above that, there are arbitrary marks. They use dictionary words that have nothing to do with the product or the service. And the best example here is “Apple.” Apple is not in the business of selling apples, otherwise it would have been a generic mark. But they use the word “Apple” to sell computers and phones and software. And none of this has anything to do with apples. So they use a dictionary word in connection with unrelated products and services, thus making it an arbitrary mark.

And finally there are fanciful trademarks. When you come up with a word that did not exist,that means nothing, it’s not in the dictionary and you just came up with that name and thought it would be a great name for a product or a service, and you give it that name—and it’s also very trademarkable. A good example for that would be—and there are so many of them—and something tells me, if I come up with a name as an example, I would get some comments that actually this means something in some other language, but I’m still going to give it a try. And if I’m wrong with an example, you’re welcome to post your comments and correct me, but you’ll still get the point. So for example, “Sony” or “Yamaha”. This means nothing, at least in English. Some of the most famous fanciful trademarks are Xerox, Kodak, and Exxon.

Some other good words that used to be fanciful marks are “Escalator”, “Aspirin,” and “Linoleum.” They used to be fanciful marks that mean nothing, that did not exist, but now they are generic marks or very close to generic marks in case of Aspirin. Somebody came up with a name, they gave this name to a product. But they became so prevalent on the marketplace that people started using those names as generic names. Google is another good example of a trademark that may be on its way to becoming generic.

So again, the easiest way to get your trademark registered is to come up with a fanciful name that means nothing and does not exist in a dictionary. It only means something to you, and then you build the brand around that. Below that is arbitrary mark that has nothing to do with the product or service but is a dictionary word. And below that—suggestive marks. They are still registrable, they are strong, but there is always this dilemma that the trademark examiner goes through: is this suggestive or is this descriptive? Because descriptive marks are not trademarkable and suggestive marks are. If the trademark examiner thinks that it is descriptive, then really, it’s the job of your trademark professional to argue with them and prove that instead of being non-registrable descriptive mark, it’s actually just suggestive, which is registrable. There is really no strict delineation between the two, it’s somewhat subjective. And what you need to do if you get a descriptiveness objection is to prove that while the trademark might describe in some shape or form the feature of the product or the characteristic of the service, it does much more than just communicate to the market what that characteristic is. As long as it’s more than just describing, it should be suggestive. And at the very, very bottom, you get generic trademarks. These are not registrable.


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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.

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