Trademark Strength Scale: Branding Strategy in Naming Your Business

Trademark Scale

Your brand name will identify your product, conjure your company backstory, and set immediate expectations of quality with customers. With this level of importance, how do you go about selecting a proper business name? Thankfully, the following spectrum outlines the classifications of types of trademarks by strength.

Fanciful or Coined Marks (strongest)

Fanciful trademarks are completely new (“coined”) words without an alternate dictionary definition. These trademarks are inherently distinctive, because there is no competing meaning. Examples include KODAK for film and EXXON for oil products.

Arbitrary Marks

Arbitrary Marks include words that have a pre-existing meaning, but the word is used in a new way to represent an unrelated product. Examples include APPLE for computers and CAMEL for cigarettes.

Suggestive Marks

Suggestive marks include hints toward the nature or attributes of a good or service. However, a suggestive mark does not directly describe the product or service. For example, MICROSOFT for computer software suggests software on a microcomputer without directly describing the product. Additionally, NETSCAPE suggests the landscape of the internet without directly describing a browser. Suggestive marks require imagination, thought, or perception to relate to the product, whereas descriptive marks do not.

Descriptive Marks (Weakest)

Descriptive marks merely describe an attribute or quality of the product or service. These descriptions are not inherently distinctive when used to represent a product. For example, LIGHT for computers is descriptive of the weight of a computer. Furthermore, SHARP for televisions is descriptive of picture quality.

If a mark is merely descriptive, the United States Patent and Trademark Office will not allow registration on the primary register. However, if acquired secondary meaning can be shown, then the mark may be registered on the supplemental register. Acquired secondary meaning means that the term is recognized in the market for both the descriptive quality and also as a representation of the product. However, proof of secondary meaning can be expensive to acquire. In our examples above, SHARP was registered through the supplementary register through acquired secondary meaning.

Picking a Place on the Trademark Strength Spectrum

The immediate question is why don’t more businesses aim for coined terms, if they are the most distinctive? Fanciful marks are difficult to create. In fact, many large businesses hire marketing firms to create a fanciful mark that isn’t distracting from the product. In addition to this cost, less descriptive trademarks require more advertising dollars to educate the market. However, aiming low for a descriptive mark can delay your trademark registration until acquired secondary meaning can be proven. Proving this meaning can have additional costs, such as the high cost of market surveys. As a result, many companies try for suggestive marks to hint at an aspect of the product while retaining inherent distinctiveness.

If you have an idea for a new trademark for your business, product, or service, try out a free U.S. trademark search engine to search for existing marks.

If you need help with your patents, trademarks, copyright, or trade secrets, please contact us.

Jeremy I. Maynard
Registered U.S. Patent Attorney
Troutman & Napier, PLLC
4740 Firebrook Blvd.
Lexington, KY 40513
Tel: 859-253-0991
Web: Troutman & Napier, PLLC
Originally Published at: Maynard.Law
Originally Published by: Maynard.Law

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