Selecting your brand
Deciding on a strong trademark can be a formidable task. Here are some guidelines:
Distinctiveness
Distinctiveness goes to the heart of the function of a trademark: its ability to identify a source (you). The legal framework that has developed around this requirement can be satisfied with one of two doctrines: inherent distinctiveness or acquired distinctiveness.
A trademark is inherently distinct if it automatically tells the consumer to whom it belongs. Inherently distinctive marks are the strongest kind of mark, and require no further information to tell the consumer who is represented by them. Xerox is an example of an inherently distinctive mark.
In contrast, marks that acquire distinctiveness have what as known as a secondary meaning: while the mark doesn’t tell you inherently who it represents, its constant use has come to tell consumers over time that the mark represents a specific brand. Tiffany Blue is an example of a mark that has acquired distinctiveness.
The difference between the inherent and acquired can be confusing. In order to differentiate the requirements, the courts have developed a continuum of distinctiveness.
From most distinctive to least, there are four categories:
Arbitrary / Fanciful > Suggestive > Descriptive > Generic
Arbitrary / Fanciful
Arbitrary marks are those that have an independent meaning but not one that relates to the particular product or service they identify. Examples include Apple (for computers, but not for produce), and Subway (for sandwiches, but not for transportation).
Fanciful marks are marks that are made up, having no meaning other than their trademark meaning. Examples include Google, Kodak, Exxon, and Xerox.
Arbitrary or fanciful marks are inherently distinctive. They are the strongest type of marks.
Suggestive
Suggestive marks are those that suggest the nature, quality, or characteristic of the products or services, but do not describe this characteristic. Suggestive marks require imagination on the part of the consumer to identify the characteristic. Examples include Blu-Ray, Greyhound, and Coppertone.
Suggestive marks are also inherently distinctive.
Descriptive
Descriptive marks are just that – descriptive. They merely describe the goods or services to which they pertain. Examples include Best Buy and International Business Machines (IBM).
To achieve substantial federal protection, descriptive marks must acquire secondary meaning. In order to acquire this level of consumer association, secondary meaning typically requires the mark to be in use for a minimum of five years.
Generic
A generic trademark is a trademark has become the generic name for, or synonymous with, a general class of products or services. It either never had or has lost its association with the source.
Marks can be generic, e.g., Bar-B-Que, or become generic over time. Some examples of well-known trademarks that became generic over time include linoleum, escalator, trampoline, thermos, and yo-yo.
Generic terms are not protectable.