Choosing a trademark can be one of the most exciting parts about building your business. Your trademark should represent your brand and identify your company as the source of your brand’s goods or services. It is important to choose a strong trademark which will offer greater protectability and less risk to potential infringements and challenges. Trademarks fall into five categories: generic, descriptive, suggestive, arbitrary, and fanciful. Generic marks are the weakest and are generally unregistrable at the federal level. Descriptive marks are likewise quite weak and mostly unregistrable. Suggestive marks are slightly stronger and start to move a mark from unregistrable to registrable. Arbitrary marks are stronger than suggestive marks but fanciful marks are the strongest and most likely to achieve registration. Below we have listed the five trademark categories from weakest to strongest. Using this blog as a guide may help prevent refusals from the USPTO but the best way to avoid refusal is to hire a trademark attorney.
Generic marks are those which simply indicate the exact good or service. For example, “honeycomb” would be a generic trademark for selling honeycomb. The USPTO does not allow generic registrations because they are the term used to identify the exact good or service and therefore everyone in the marketplace should be allowed to use that word to indicate that good or service. It would be extremely cumbersome for one person to own the trademark “honeycomb” and be able to prevent everyone else in the marketplace from using that mark to sell their honeycomb goods.
Descriptive trademarks are a touch more specific than generic marks, but they do not rise to the level of distinctiveness required by the USPTO for trademark registration. For example: “sweet honeycomb” is a descriptive trademark if used to sell honeycomb. This is a descriptive mark because it merely describes the goods sold rather than distinguishing the goods.
Suggestive trademarks are stronger than generic and descriptive trademarks because it “suggests” the characteristics of the goods or services without merely describing or flat out saying what the characteristics are of the goods or services. The trademark “honeycomb” used to sell candles made of beeswax is an example of a suggestive trademark.
Arbitrary trademarks are those which are entirely unrelated to the goods or services they represent. Arbitrary trademarks are the second strongest category of trademark and are likely to achieve registration assuming there are no other reasons for refusal. The trademark “honeycomb” for office printers is an example of an arbitrary trademark.
Fanciful trademarks are the strongest category of trademark. Fanciful marks are marks which did not exist prior to being created for the sole purpose of being a trademark. There are several very famous fanciful marks such as “Exxon,” “Kodak,” and “Xerox.” Each of these marks was created to be a trademark and had no meaning prior to becoming a trademark.
Other potential reasons for refusal:
- Foreign term is descriptive
- Geographic descriptive
- Deceptively mis-descriptive
- Individuals name
- Title of a book or a movie (books and movies are copyrights not trademarks)
Choosing the right trademark(s) for your company is important for both establishing the right brand in the marketplace and for saving your company money. If a mark is weak it will not be registrable with the USPTO and applications for weak trademarks will waste company time, resources, and money for no return. Additionally, even if you are not seeking federal registration, it is important not to choose a mark that is already in use by someone else offering similar goods or services, which can result in having to change your trademark to prevent an unwanted lawsuit.
It is always a good idea to seek counsel from a trademark attorney before applying for a trademark. If you have received an Office Action and don’t know how to proceed with your USPTO application, reach out to a trademark attorney with experience in handling Office Actions with the USPTO.