How to pick a strong trademark or brand name.
There are five levels of trademark strength which range from non-registrable to strong protection.
I will walk you through each level to inform you how strong your mark is.
Keep in mind, that there have been almost one billion trademarks filed in the U.S. If you’re using a generic, descriptive, and sometimes even a suggestive trademark, chances are someone has already thought of it, or something very similar. It is getting increasingly more difficult to trademark brand names due to this.
The five levels of trademark strength from weakest to strongest
generic
descriptive
suggestive
arbitrary
fanciful
Trademark strength
A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods and/or services. Don’t be this generic! From a branding perspective, you want to separate yourself from the crowd.
(see In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987))
Descriptive marks include:
Popcorn - for popcorn
Cheap Hats - for inexpensive headwear
Tienda Pelo - for a hair store (yes, the USPTO will translate your mark into English and analyze it in English)
Joe’s Pet Supplies - for a pet store owned by Joe
To have a good chance of approval, your mark will need to be at least suggestive, arbitrary or fanciful and also distinct.
Descriptive Trademarks
A merely descriptive mark “describes an ingredient, quality, characteristic, function, feature, purpose, or use of the goods or services” specified in the trademark application [TMEP 1209.01(a)]. Descriptive marks are typically not strong enough for trademark and will be refused or receive protection initially on the Supplementary Register. When you have a descriptive trademark you are getting closer to a protectable mark. A bit more creativity goes a long way. Descriptive marks can eventually receive protection, but if approved, it could take years to move from the Supplemental Register to the Principal Register.
Many unsuspecting brand owners will receive a §2(e)(1) refusal from the USPTO due to their mark being merely descriptive. The reason descriptive marks are not eligible for registration is that competitors may need to use those descriptive words to describe their products. If descriptive trademarks were allowed it would enable brand owners to have exclusive ownership over certain descriptive words that can be used to describe a competitor’s products resulting in never-ending litigation.
Descriptive marks include:
Best Buy - for best bargain on technology
Sharp - for crystal clear televisions
Pizza Hut - for a pizza parlor
You may be wondering how these marks have trademarks if they are descriptive. These brands spent several years, and hundreds of thousands/millions of dollars trying to prove in court and to the USPTO that they acquired distinctiveness. Acquired distinctiveness means the words have reached a special significance to the consuming public and that the word has come to mean that the product is produced by that particular manufacturer. This takes a minimum of five years.
Suggestive Trademarks
The lowest level of trademark protection that will earn you a registration provided the available, are suggestive trademarks. These marks are connected to your product or service but aren’t directly descriptive of the mark. Suggestive marks require a bit of imagination and thought to draw the connection between the name and the product. They have a higher likelihood of approval by the USPTO.
Suggestive trademarks include:
CopperTone - for sunscreen
NetFlix - for online movies
Burger King - for good hamburgers
Arbitrary trademarks
An arbitrary trademark is a random existing word or phrase that would not normally be associated with your products or services. Arbitrary marks are considered very strong trademarks since you are granting a new, unique meaning to an existing term based on your business. Arbitrary trademarks may be simple words, but they are typically not associated with the products/services being offered.
Arbitrary trademarks include:
Apple - for computers and technology
Coach - for luxury purses
Shell - for gas
Fanciful Trademarks
Fanciful trademarks are the granddaddy/mommy of them all! This is the strongest, most well-protected trademark you can have, with the highest likelihood of approval. A fanciful mark is a completely made-up word or phrase to represent your product or service. The made-up word is difficult for anyone to claim since it is made up. If you want a more sure-fire trademark that has a low chance of refusal, make up a word! Get creative, your branding, search engine optimization (SEO), and legal department will thank you for it.
Fanciful trademarks include:
Kodak - for cameras
Exxon - for gas
Adidas - for sporting apparel
Source: Trademark Manual of Examining Procedure
Struggling to find a distinct trademark name?
It’s not as easy as many people think! Luckily with the introduction of AI and ChatGPT, many clients have had great success asking ChatGPT to come up with creative names for them. Though, the names will mostly be suggestive. Of course, the names still have to be analyzed to see if they’re available but it’s a good place to start.
For example, I asked ChatGPT to create a list of 5 distinct brand names for a sandal brand that highlights beach life:
1. Beach Breeze Footwear
2. Sand Sprint Sandals
3. Coastal Trek Flip Flops
4. Wave Walk
5. Shore Stride Sandals
Trademark Analysis Services:
Want to receive a trademark analysis to see where your mark falls? Head over to our trademark analysis service.