You have a great idea for a new business. Your instinct may be to select a descriptive or generic trademark for your brand that directly conveys the products and services you are offering. Such marks will likely save you time and money on trying to get consumers to understand what you are selling.
The downfall of a merely descriptive or generic mark is that it will be refused registration by the United States Patent and Trademark Office (USPTO). Why? The purpose of a trademark is to help consumers distinguish your goods/services from another company’s goods or services. Descriptive and generic trademarks do not necessarily help consumers do this. Also, registering such marks would prevent similar businesses from using the descriptive or generic terms for their products/services.
The strongest trademarks are those that are completely made up (“fancifcul”). However, marks do not have to be devoid of all meaning in relation to the goods/services to be registrable. Instead, they can be suggestive. To better understand this, examples of the various categories of trademarks are provided below from weakest to strongest.
DESCRIPTIVE & GENERIC MARKS
In some instances, a mark may be both descriptive and generic. A generic mark is a term that the general public understands to be the common name for the goods or services being offered in relation to the applied for mark.
Below are examples of generic marks that have been refused by the USPTO:
- “OUTDOOR PRODUCTS” for the sale of outdoor clothing and products.
- “TIRES TIRES TIRES” for the sale of tires.
- “SCREENWIPE” for the sale of screen wipes for computer and television screens. Note, that combining two generic words will not necessarily overcome a USPTO refusal if the joining lends no new meaning of the term.
A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the applied for goods or services.
Below are examples of descriptive marks that have been refused by the USPTO:
- “PAINT PRODUCTS CO.” for paint products.
- “REGISTRY OF MEDICAL PATHOLOGISTS” for services including providing a registry of medical pathologists.
- “COASTER-CARDS” used in connection with the sale of coasters for direct mailing purposes.
ARBITRARY, SUGGESTIVE & FANCIFUL
If you have your heart set on a mark that will convey some meaning in relation to the goods/services offered, you should ensure the mark is suggestive, not merely descriptive. A suggestive mark requires you to use your imagination to reach the conclusion that the mark is related to the products/services being offered.
Here are some examples of suggestive marks:
- “SPEEDI BAKE” for frozen dough was deemed suggestive, not descriptive, because it merely suggests a characteristic of frozen dough (quick baking).
- “NOBURST” for antifreeze suggests a desirable result without directly informing consumers of the product.
- “TINT TONE” used in connection with hair coloring does not immediately convey the product being offered.
An arbitrary mark is stronger than a suggestive mark. It is a common term used in an unexpected way. In other words, the mark does not relate to the goods or services being offered. One of the most well known examples of an arbitrary mark is “APPLE” for computers.
Finally, the strongest mark is one that is fanciful, or completely made up for the sole purpose of functioning as a trademark. Examples of fanciful marks include PEPSI, EXXON, and KODAK.
To set yourself up for a successful trademark application, avoid generic and descriptive marks and opt for a mark that is fanciful, arbitrary, or suggestive.
If you would like additional information regarding the trademark process, click here.
For information on international trademark registration, click here.