The Five Types of Trademarks - Worth Millions to Worthless

The more distinct and creative your trademark is, the more protection trademark law affords to it.

Trademark brand names come in all different forms, however, while some are worth millions, others have lost all value or never had any to begin with.

WHAT TYPES OF TRADEMARKS CAN BE REGISTERED?

Fanciful, arbitrary, and suggestive trademarks can be registered upon first use in commerce. (Footnote 1) Further, they can be protected in advance of intended future use, with an intent to use trademark application.

Descriptive trademarks cannot be registered without a showing of acquired distinctiveness, also known as secondary meaning.

Generic trademarks are never eligible for registration, and are therefore not discussed here.

WHAT IS A FANCIFUL TRADEMARK?

A fanciful trademark consists of a made up word(s), and is therefore, considered the most distinct type of trademark. As such, trademark law grants fanciful trademarks with the highest level of protection under trademark law. (Footnote 2)

WHAT IS AN ARBITRARY TRADEMARK?

Arbitrary trademarks contains actual words, but are arbitrary in nature and have nothing to do with the goods or services that they represent. Just a step below a fanciful trademark in terms of strength, an arbitrary trademark is often used when a made up term simply does not fit the needs of the brand.

WHAT IS A SUGGESTIVE TRADEMARK?

A suggestive trademark provides a consumer some guidance as to how the trademark relates to the specific product or service that it represents, without actually describing it.

If a trademark, or a portion of a trademark, connotes an abstract concept, (i.e. one that is non literal), and as such serves as a metaphor for the actual good or service itself, such “metaphorical usage means the mark is arguably suggestive”. (Footnote 3)


WHAT IS A DESCRIPTIVE TRADEMARK?


A descriptive trademark conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods. (Footnote 4)

Proper analysis is based upon “whether someone who knows what the goods or services are will understand the mark to convey information about them.” (Footnote 5)

WHAT TYPE OF TRADEMARK IS BEST FOR ME?

The selection of a strong fanciful, suggestive, or arbitrary trademark can provide a business with solid legal protection so long as it is maintained.

Marketability is always going to come first, as the main purpose of a trademark is to distinguish the products and services provided from those sold by other parties.

1. 15 U.S.C. § 1051. See Nautilus Grp., Inc. v. Icon Health & Fitness, Inc., 372 F.3d 1330, 1340, 71 USPQ2d 1173, 1180 (Fed. Cir. 2004).

2. Abercrombie & Fitch Co. v. Hunting World, Inc. 537 F.2d 4, 9 (2d Cir. 1976).

3. Xtreme Lashes, LLC v. Xtended Beauty, Inc., 576 F.3d 221 (5th Cir. 2009).

4. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987).

5. In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002).

Jeffrey Sturman