What Makes A Good Trademark?

By Thomas W. Hanson, Patent Attorney*

Certainly, a good trademark should be memorable. It should stick in the minds of your customers and remind them of you and your product. In addition, your trademark should be legally protectable so that you can keep others from stealing it or infringing upon it. The strongest legal protection comes with federal registration. Unfortunately, many memorable trademarks are either difficult or impossible to register with the Trademark Office.

One of the pre-requisites for registration of a trademark is that it be “distinctive.” Distinctiveness is a term of art which has a very definite, if not always clear, meaning. For trademark purposes, every trademark falls into one of five categories of distinctiveness ranging from generic to fanciful. In between are descriptive, suggestive, and arbitrary trademarks. The level of protection afforded trademarks corresponds to its level of distinctiveness.

A generic mark is one that states a basic nature of a product or service. These are terms which would be used by all manufacturers of the same type of goods to describe their products. This category includes terms such as “milk”, “dairy”, and “fresh” when used with dairy goods. Because these terms would need to be used by all manufacturers, they can never serve to distinguish one manufacturer from another. Since they are considered to have no distinctiveness, generic marks can never be registered.

Descriptive trademarks are considered to not be inherently distinctive, but are capable of acquiring distinctiveness. These are trademarks which describe a characteristic, quality, function, feature, ingredient, purpose or use of a product or service. An example is “Speedy Messenger” for a messenger service. If a descriptive mark is used with a product for sufficient time that consumers come to associate the trademark with a specific supplier, it is said to have acquired “secondary meaning.” This is acquired distinctiveness that will allow the trademark to be registered, but only it is established. This typically takes five years or more.

A suggestive mark does not directly describe the product or service but instead suggests a characteristic and requires at least some imagination to make the connection between the mark and the attribute. “Greyhound” for bus service (suggesting “speedy”) and “Yahoo!” for an Internet search engine (suggesting a “jumping off place”) might be considered suggestive. Suggestive marks can be very tempting because they are often memorable and are immediately registerable. However, they can be difficult to differentiate from descriptive marks which are not immediately registerable. At least three major legal tests have evolved to help make the decision, none of which is black and white. If you choose a trademark in this area, realize that you take the risk that it might be considered descriptive and you’ll have to wait until secondary meaning is established to register.

Arbitrary and fanciful marks bear no relation to the product or service. They differ in that fanciful marks are usually “made-up” words where arbitrary marks are real, but unrelated, words. Both arbitrary and fanciful marks are considered inherently distinctive and can be registered immediately upon first use. These are the best types of trademarks to adopt initially if at all possible. A good example of an arbitrary mark is “Apple” for computers. It’s a real word, but has nothing to do with computers. Fanciful marks include “Kodak” and “Exxon.” Both were made up and have no direct connection to their associated products. While it can be more difficult to establish market recognition for arbitrary and fanciful trademarks, they are clearly registerable.

It’s important to keep several factors in mind when selecting a trademark. It should be both memorable and legally protectable. The best protection comes from Federal registration which requires that the trademark have either inherent or acquired “distinctiveness.” Keep in mind that there are other prerequisites for registration including actual use of, or bona fide indent to use, the trademark and that it not be confusingly similar to an existing trademark.

* Originally published in the Rocky Mountain Inventors and Entrepreneurs Congress Newsletter, January 1998
All trademarks mentioned are the properties of their respective owners.