Choosing the right brand name is one of the most important steps in building a business. Not every name is equally protectable under federal trademark law. How strong or how weak your trademark is determines how easily you can register it with the United States Patent and Trademark Office (USPTO) and how broadly you can enforce it against competitors.
In the United States, both the USPTO and our federal courts follow a “spectrum of distinctiveness” from strong to weak marks. This post aims to explain the difference between strong and weak trademarks. This post will further discuss the difference between descriptive and generic marks.
What Is a Strong Trademark?
A strong trademark is highly distinctive and immediately identifies the source of goods and/or services. These marks enjoy the broadest legal protection because consumers recognize them as brands rather than product descriptions.
Strong marks fall into three categories:
Fanciful Trademarks
Fanciful trademarks are invented words with no prior meaning, such as Rolex or Exxon. These are the strongest trademarks, and are the easiest to register with the USPTO.
Arbitrary Trademarks
Arbitrary trademarks are real words used in an unrelated context, such as Apple for computers or Shell for gasoline. Generally speaking, arbitrary marks are also easy to register with the USPTO.
Suggestive Marks
Suggestive marks are words or phrases that hint at a product’s qualities but require imagination to make the connection, such as Tesla for electric vehicles or Netflix for video streaming services. Suggestive marks can be tougher to register with the USPTO, but are still considered to be strong marks.
Not only are strong trademarks the easiest to register with the USPTO, they are easier to enforce and defend in court.
What Is a Weak Trademark?
A weak trademark lacks distinctiveness and is more difficult to protect. Because these marks describe the product itself, a feature of the product or services, or rely on common terms, competitors often have more freedom to use similar names.
For example, Best Buy for an electronics retailer is a weaker mark than Apple for computers. Weak marks may still be registrable, but their legal scope of protection is narrower. Weak trademarks can be divided into descriptive trademarks and generic trademarks.
Descriptive Trademarks
A descriptive trademark directly describes the qualities, characteristics, purpose, or ingredients of a product or service. Examples include Cold & Creamy for ice cream or Quick Print for printing services.
- Descriptive marks are not inherently protectable under U.S. trademark law.
- In certain instances, descriptive marks can be registered on the USPTO’s Principal Register only after acquiring secondary meaning (also called acquired distinctiveness), meaning consumers recognize the mark as identifying a single source.
Generic Trademarks
A generic term is the common name for a product or service itself. Marks such as Computer for computers or Bicycle for bicycles fall within this category.
- Generic terms can never be registered or protected as trademarks.
- Marks such as Aspirin were once registered trademarks, but became generic after widespread public use made the mark a part of everyday vocabulary.
Companies devote considerable resources to prevent their brands from becoming generic. Because generic words are necessary for competitors to describe their goods, they are always free for public use.
Why Trademark Strength Matters for Your Brand
The strength of your trademark impacts:
- Trademark Registration – Strong marks have a higher likelihood of USPTO approval.
- Trademark Protection – Strong marks are easier to enforce against infringers.
- Brand Recognition – A distinctive name helps you stand out in the marketplace.
Investing in creating a fanciful, arbitrary, or suggestive trademark gives you the strongest foundation for long-term protection.
Choose Wisely
Fanciful, arbitrary, and suggestive trademarks fall within the category of strong marks, and are generally easier to register with the USPTO, and are less difficult to assert in court. Descriptive trademarks are weak marks, but may become protectable over time through acquiring secondary meaning. Generic terms are never protectable.
Choosing the right brand name can be difficult, but choosing the wrong name can be disastrous. Consult with an intellectual property attorney to learn more.