Imagine you’re driving down a busy street, looking for the business someone referred you to.
You can’t remember the exact address, and you realize there are a whole lot of storefronts with the name you were given!
That’s what today’s online marketplace is like.
It’s incredibly saturated with “look-alike” brands. And this forms a compelling argument in favor of registering your trademark.
Trademarks–which can be a word, phrase, logo, or other design–act as a unique identifier that helps customers distinguish your goods or services from those of other businesses.
They play a critical role in brand protection and recognition by making it easy for clients and customers to find your business through all the other distractions.
The last thing you want is for your customers to be scrolling around the internet, wondering which “store” is yours.
Choosing a strong trademark to register is a great way to put out a distinguishable signpost!
**Real quick, first: this post is legal education and information. It’s not business, financial, or legal advice, and it doesn’t create an attorney-client relationship between us.
This is also an attorney communication under Rule 7.2 of the Rules of Professional Conduct of the State Bar of California and Business and Professions Code Sections 6157-6159.2. Please chat with an attorney in your area to make sure you’re protecting your business.**
Choosing a strong trademark: understanding levels of distinction
For a trademark to be registrable with the USPTO (United States Patent and Trademark Office), it must be distinctive.
But not all levels of distinction are created equally.
There are five levels of distinctiveness, from fanciful (offering the strongest level of protection) to generic (offering no protection at all).
Fanciful distinction
Fanciful words can’t be found in your dictionary or anywhere else.
They’re words that have been invented for the sole purpose of functioning as a trademark.
For example, “Kodak” and “Lexus” are both fanciful words.
Fanciful distinction offers the strongest trademark protection because it’s impossible for anyone else to use a word that doesn’t exist!
Arbitrary distinction
Arbitrary words are real words, but they have no association with the goods or services connected with them.
Great examples of arbitrary words include –
Apple: it has nothing to do with tech
Amazon: originally not a word associated with an online marketplace
Arbitrary distinction is the second strongest trademark protection level.
It would be pretty difficult to choose the same arbitrary word as someone else in connection with your own goods or services.
Suggestive distinction
Suggestive words aren’t completely arbitrary, but they require some imagination, thought, or perception to connect them with the relevant goods or services.
These are words that suggest a quality of the goods or services without saying it outright.
Suggestive examples include –
Coppertone: “Copper” suggests the skin-darkening properties of a tanning oil
Jaguar: “Jaguar” suggests the qualities of speed, agility, and strength in a vehicle
Suggestive distinction is the third level of trademark protection.
It’s not as strong as fanciful or arbitrary distinction, but it still offers some degree of protection from copycats.
Descriptive distinction
Descriptive words are just that–words that describe the nature or a particular characteristic of the product or service with no distinctiveness.
For example, “Comfortable chairs” describe, you guessed it, chairs that are comfortable.
Descriptive distinction offers the weakest level of trademark protection.
A descriptive mark will be refused registration with the USPTO unless you can show it’s acquired a secondary meaning. i.e., a consumer recognizes the mark as indicative of the brand and not just as a word.
It’s also possible for a descriptive mark to qualify for the Supplemental Register. (This is like the celebrity B-List of trademark registration, which provides more limited protections)
And after 5 years of continuous use with Supplemental Registration, you can file a new application for the Principal Register.
Generic distinction
A generic word is one that’s become synonymous with the underlying product or service to the point where it can no longer function as an identifier for a particular brand.
For example, ‘cereal’ or ‘law.’
Generic words don’t make strong trademarks! They are so weak that they can never be registered as a trademark with the USPTO.
As a note, a trademark can also become genericized if the mark becomes identified with a type of product or service in the public’s mind rather than a particular brand. The trademark registrations for aspirin and cellophane both lost their trademark rights because of this!
Other things that can never be registered as a trademark
In addition to generic words, several other things will be refused for trademark registration.
They include:
>> Commonly used phrases.
You can’t register a phrase that’s part of common, everyday speech as a trademark.
For example, you can’t register “Drive safely.”
>> Phrases not used for business purposes.
Just because you use a phrase regularly doesn’t mean it identifies your brand.
For example, you can’t register “Have a nice day!” as a trademark.
>> Functional aspects of the product.
You also can’t register anything functional (i.e., necessary for the proper operation of the product) as a trademark.
For example, you can’t register the design of a drinking glass as a trademark.
Sidenote: You could talk with a patent attorney about these functional aspects.
>> A phrase on a t-shirt or other goods.
You can’t register as trademark phrases printed on t-shirts, mugs, or other merchandise unless it meets certain conditions
For example, you can’t register as a trademark the phrase “I heart NY” if it’s screen printed on the front of your merchandise.
(However, you could if it’s being used as part of your brand on the tag or hang tag and not just as a decorative phrase.)
These types of applications will receive an ‘ornamental refusal’ since the mark is being used as decoration and not a brand identifier.
There are also some additional rules about what you can and can’t register as a trademark when it comes to geographic terms, surnames, and government symbols.
Strong trademarks set your business up for success
This list is by no means comprehensive, but it should give you a solid place to start as you choose a strong trademark.
Set yourself up for whole brand protection.
Schedule a consultation with Nicole Cheri Oden Law® to get started building a strong trademark for your brand. Our consultations include:
- Getting to know your business and goals
- Explanation of the federal trademark registration process
- A “knock out” search and identification of any red flags to help you save time and money (and identify if registration of a mark may not be worth pursuing)
- Answers to all your questions about the federal trademark registration process so you feel comfortable and confident in moving forward
