Mertzel Law PLLC

When choosing a trademark, work up a short list of terms that communicate your brand. Next, consider the strength of the mark because stronger marks are easier to register and enforce.

 

A trademark's strength is often determined by considering where the mark falls on the spectrum of distinctiveness. At one end of the spectrum are generic terms, such as APPLE for apples. Generic terms are not protectable because everyone selling apples needs to be able to identify their products. At the opposite end of the spectrum are arbitrary or coined terms. These terms receive the highest degree of protection. An example of an arbitrary term is APPLE for computers. Examples of coined or fanciful terms are KODAK for film and EXXON for oil.

 

Between the two ends of the spectrum are descriptive and suggestive marks. Descriptive marks directly communicate some quality or attribute of the product, such as SPEEDY for a car wash. Suggestive marks indirectly suggest a quality or characteristic of the goods or services, such as EXTEND YOUR BEAUTY for eyelash extensions. Another example is WET ONES for towelettes. A suggestive mark requires some kind of mental leap to understand the goods or services.

 

It may be tempting to choose a descriptive mark because the mark itself helps communicate the nature of the goods or services. However, the downside is that the mark may be more difficult to register and enforce. If a term is deemed “merely descriptive” it cannot be registered or protected in court absent evidence that the has acquired distinctiveness (also known as secondary meaning) through substantial sales or advertising. A mark that has been in substantially exclusive use for five years will be presumed to have acquired distinctiveness. Suggestive marks are easier to register and protect because they do not require proof of acquired distinctiveness.