The following article does not serve as legal advice.
Trademark Registration 101:
A Three-Part Series on the Basics of a Trademark Registration
Congratulations! You’ve decided you’re ready to tackle the seemingly-daunting trademark registration process. But, it doesn’t have to be scary. The key to a successful trademark registration is preparing an application that minimizes the risk of refusal. Plus, having a trademark attorney really helps. This process can be very complicated and saturated with confusing legal theory. That’s why we’re here to help! Let’s talk about choosing a trademark.
Part I: Choosing a distinctive mark.
The more unique your mark, the more likely it is that you won’t run into any problems with the USPTO. Keep in mind the USPTO really cares about whether consumers are likely to be confused when they see a trademark.
There are five types or categories of marks:
marks are usually made-up words with no dictionary definition. Think: ROLEX for watches, SPOTIFY for music streaming, and EXXON for gas. Fanciful marks are the strongest type of mark because they are what the USPTO calls “inherently distinctive”. Since the word is not commonly used, and likely made-up, consumers can easily identify the mark as the single source of the goods and services.
marks are usually words that have dictionary definitions but are used in connection with unrelated goods. Think: APPLE for computers, CAMEL for cigarettes. Arbitrary marks are arguably just as strong as fanciful marks and are inherently distinctive. Because the mark is unrelated to the actual goods or services consumers develop a stronger connection between the mark and the source.
marks include words or terms that suggest a particular characteristic, function, or ingredient, of a good or service without actually describing the good or service. Think: Q-TIP for cotton swabs, AIRBUS for airplanes. Suggestive marks are inherently distinctive because consumers need to use their imagination to make a connection between the mark and the goods or services.
marks are marks that actually describe the characteristics, functions, or ingredients of the goods or services. Think: AMERICAN AIRLINES for an American airline company, OMAHA STEAKS for a meat company located in Nebraska. Descriptive marks require zero imagination to make a connection between the mark and the goods or services which is why they can never be inherently distinctive. They can, however, acquire distinctiveness by showing significant recognition by the purchasing public that the mark serves as a single source identifier. Descriptive marks will only be registered if there is a showing of acquired distinctiveness.
marks are words understood by the public as the common term for a product or service. Think: COMPUTER for computers, SHOES for shoes, COFFEE for coffee. Generic marks are the weakest type of mark and are never registrable. Fanciful marks are usually made-up words with no dictionary definition. Think: ROLEX for watches, SPOTIFY for music streaming, and EXXON for gas. Fanciful marks are the strongest type of mark because they are what the USPTO calls “inherently distinctive”. Since the word is not commonly used, and likely made-up, consumers can easily identify the mark as the single source of the goods and services.
Unless you have been using your mark for several years and there is a significant amount of recognition by the purchasing public that your mark only identifies your company’s goods or services (AKA your mark is descriptive but has acquired distinctiveness), the easiest marks to get registered are fanciful, arbitrary, and suggestive. However, even if you think you’ve chosen a good mark, there are other reasons the USPTO could still reject your mark. But don’t worry! We’ve got an article that talks all about what that means and why you should not freak out.
Check out Part II of this series for more information on Office Actions and refusals. Live Next Week!
Written by: Madison Marino