How Strong Is Your Trademark? The Four Trademark Strength Categories In Brief

Not all trademarks are created equal.  Some trademarks are ‘stronger’ in the legal sense than others, meaning that some marks are easier to register and enforce than other marks.  Trademarks need to be unique, distinctive, and not easily confused with other existing trademarks when they are applied to a product or service in order to be registerable with the United States Patent and Trademark Office (“USPTO”).

Trademarks are intellectual property that are classified into one of four categories of marks, based on how legally strong they are. The categories, listed in increasing strength, include: generic marks, descriptive marks, suggestive marks and fanciful or arbitrary marks.


Generic Marks

Generic marks are the weakest category of marks, and are not registerable or enforceable against others who use them. Generic marks are commonly used phrases associated with goods or services. Generic marks can either be generic at the outset of their use or become generic through improper use over a prolonged period of time. For example, using the mark SODA for sweet carbonated beverages would be a generic mark as the public associates the term “soda” with sweet carbonated beverages; the mark is considered generic at the outset of its use in this situation.

Marks that were once valid trademarks can further be reduced to a generic mark if the unauthorized use of the mark goes unpoliced. Distinctive, suggestive or fanciful or arbitrary marks can turn into unenforceable generic marks if the public commonly uses the mark in association with a particular good or service, and the trademark holder fails to police the use of its mark for an extended period of time. Common examples of once valid trademarks turning into generic marks include ZIPPER, ESCALATOR and ASPIRIN.


Descriptive Marks

Registerability and enforceability of descriptive marks is hit-or-miss, and that is why they are considered to be fairly weak marks. These types of marks describe some aspect of the product or service that the mark is being applied to. Descriptive marks fall into two subclasses: merely descriptive, and distinctive. Merely descriptive marks are not registerable, as they merely describe the product or services that the mark applies to (i.e., an image of brooms, vacuums and dusters for a cleaning service). However, a notable exemption allows descriptive marks that acquire distinctiveness to gain trademark protection. Distinctive marks can gain distinctiveness through extensive use in commerce for a period of 5 years or more.


Suggestive Marks

Suggestive marks are fairly strong marks, as they suggest something about the product or service to which they are applied, but do not describe the product or service. Some examples of suggestive marks include RAVISHING for a cosmetic line (suggesting that the make-up will make the user look ravishing).


Fanciful or Arbitrary Marks

The strongest marks are ones that are fanciful or arbitrary. These types of marks are easy to register and enforce based on their uniqueness.

  • Fanciful marks are marks that are created from imagination. They have no definition in the dictionary, are completely unique, and are unusual. An example of a fanciful marks would be CHEMZA for use with selling hats. It is a made up word, with no significance other than being used as a trademark for selling hats.
  • Arbitrary marks are marks that generally are a known thing applied to a completely different thing or service. Good examples of arbitrary marks include the mark KITTENS for use with hair accessories or MAJESTIC for weight loss management services.


For more information on the strength/distinctiveness of your mark, how to register a trademark or should you need advisement in an intellectual property matter, please reach out to our office.



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This entry was posted on Tuesday, March 1st, 2016 at 2:44 pm and is filed under Corporations, Intellectual Property. You can follow any responses to this entry through the RSS 2.0 feed. You can leave a response, or trackback from your own site.

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