When you speak with a trademark lawyer, you may hear them refer to the “registrability” of your trademark. This term refers to the fact that not all words, logos, slogans, etc., can be registered as a federal trademark with the United States Patent and Trademark Office.
The strength of a trademark depends on what trademark category the mark falls under. There are five categories of trademarks: generic trademarks, descriptive trademarks, suggestive trademarks, arbitrary trademarks, and fanciful trademarks.
This graphic shows what is commonly referred to as the trademark sliding scale or the trademark spectrum. The farther along the scale that your trademark falls, the better your chance at registering your trademark and the more protectable your trademark is.
Generic trademarks are never registrable and are not eligible for common law trademark protection. Generic marks refer to words that are so common to particular goods and services that no one should have a right to exclusively claim them. If you are a commercial salt seller and decide to call your brand “Salt,” you have a generic trademark that cannot be registered.
Occasionally, brands can become so successful that they become “genericized.” This occurs when a brand has become so prevalent in the market that consumers only think of that particular brand name’s trademark when thinking of the same goods or services made by others. A prime example of a genericized trademark is the word dumpster. The dumpsters that you see today derive their name from a word that used to be an actual brand name. Another example is the term Aspirin. Bayer used to own a trademark for Aspirin, but usage became so common that the mark was determined to be generic.
Descriptive trademarks merely describe some attribute or quality of the goods and services to which they are attached. If you are a champagne manufacturer and decide to call your brand “Sparkly Wine,” you have a descriptive trademark. Sparkly and wine both refer to features and qualities of champagne.
If the trademark is merely descriptive, it can be registered on the Trademark Supplemental Register. Once secondary meaning is achieved, the mark can be registered on the Trademark Principal Register. Secondary meaning means that a mark has become distinctive or that consumers associate that particular mark with the particular goods and services that it is used in conjunction with. Secondary meaning is most often achieved through long term use and significant expenditure on brand awareness.
Suggestive marks suggest a characteristic or quality of the goods or services. Suggestive marks require the consumers to make a connection in their minds between the trademark and the goods and services with which the trademark is used. JAGUAR is an example of a suggestive mark. When people think of the jaguar animal, they think of a fast and sleek animal. This is exactly what JAGUAR the brand wanted: their consumers to associate those qualities with their cars.
Suggestive marks are very popular due to their tendency to associate a brand quality with the actual goods and services. However, they fall mid-spectrum on the trademark scale because what may seem suggestive to you may be merely descriptive to your trademark examining attorney. The distinction between descriptive and suggestive marks is often a fine line.
Arbitrary trademarks have nothing to do with the goods and services they are associated with. They are real words that are arbitrarily chosen by the brand owner for association with the goods and services. The most famous example of an arbitrary mark is APPLE. An apple is a real thing and the fruit has nothing to do with the fancy computers or iPhones that we all have today. Fun fact, the Apple trademark is now worth nearly $40 billion dollars.
Fanciful trademarks are inherently distinctive trademarks that are invented or created by the brand owner. They are usually made-up words.
An example of a fanciful trademark is Clorox.® Clorox is a made up term; yet, it has been applied to a commercial bleach brand. Another example is the Kodak® brand. Kodak is a made-up word that is now worth millions due to its value as a trademark for photography goods. If your mark is fanciful, you have a high likelihood of registration, assuming no one else is using the same mark.
The trademark lawyers at Ritter Spencer PLLC serve trademark clients in all fifty states. Our trademark attorneys can help you register your trademark. Call our trademark team today at (214) 295-5070.
Chelsie Spencer is an attorney with Ritter Spencer PLLC. Chelsie handles trademark registration, trademark licensing, trademark maintenance, trademark portfolio management, and trademark litigation, among other trademark services. She can be reached at (214) 295-5074.