Highly Effective Trademarks

A highly effective trademark strongly identifies you as the owner of your goods or services. A weak mark is not distinctive, or is one that others are already using.

To create a highly effective trademark, you should determine where your proposed mark fits within the hierarchy of marks.

The Hierarchy of Marks

Fanciful marks are the strongest marks because they are inherently distinctive. They use a word or symbol that has no established meaning. They are initially the most difficult to create the association between mark and product, and acquire meaning through your marketing and branding, but they are the easiest to protect and offer the broadest protection. Examples: Google, Xerox, Adidas, Rolex.

Arbitrary marks use words that have a common meaning but are being used to identify products or services that are not obviously related. They are afforded a broad scope of protection against third-party use. Examples: Apple Computers, Amazon, Camel Cigarettes, Domino's Pizza, Canon Copiers.

Suggestive marks use words or symbols that suggest some quality or characteristic of the products or services, but do not directly describe them. They require imagination, thought, or perception for the customer to see the connection. Examples: PetSmart, Greyhound, Microsoft, KitchenAid.

Descriptive marks directly describe the goods or services being provided. They are the most difficult to register and protect. The only way to successfully register a descriptive mark is if you have used it long enough that it has developed a distinctive secondary meaning, where consumers identify the mark with a single source. Examples: Sports Illustrated, Pizza Hut, Sharp.

Generic terms are terms that the purchasing public understands primarily as the common or class name for the goods or services. They are incapable of functioning as trademarks and are not registrable. Examples: diet soda, super glue, classes online, pizza.com. Escalator and cellophane are examples of terms that once functioned as trademarks but became generic.

Surnames and Names

Trying to trademark a name is similar to trying to trademark a descriptive mark. The test depends on the primary significance of the mark as a whole to the purchasing public. Relevant factors include:

Whether the surname is rare
Whether the term is the surname of anyone connected with the applicant
Whether the term has any recognized meaning other than as a surname
Whether it has the structure and pronunciation of a surname
Whether the stylization of lettering is distinctive enough to create a separate commercial impression