Distinctive Trademarks For Online Protection and Visibility

Understanding Trademark Distinctiveness: Why Some Marks Are Stronger Than Others

When it comes to protecting your brand, not all trademarks are created equal. The United States Patent & Trademark Office (USPTO) classifies trademarks based on their level of distinctiveness, which ultimately determines how much legal protection they receive. The stronger the trademark, the easier it is to enforce against competitors.

Types of Trademarks: Distinctive, Suggestive, or Generic

The USPTO organizes trademarks into several categories based on their distinctiveness:

1. Distinctive Trademarks: These are the strongest trademarks and receive the highest level of legal protection. Distinctive marks are further divided into two subcategories:
   • Fanciful Marks: These are made-up words that have no meaning outside of the brand. Examples include XEROX and KODAK.
   • Arbitrary Marks: These use real words, but the words have no logical connection to the goods or services provided. Examples include AMAZON (for an online retailer) or COACH (for handbags).
2. Suggestive Trademarks: These marks suggest, but do not directly describe, the goods or services. For instance, the mark YOUR ACCOUNTANT for accounting services suggests the nature of the business but requires some imagination to connect the name to the service.
3. Generic Terms: These marks are the weakest and receive no protection. Generic terms directly describe the goods or services they represent. For example, COFFEE STORE for a business selling coffee cannot be trademarked because it is generic.

Real-World Examples: Arbitrary vs. Suggestive Marks in Action

To better understand the relative strength of trademarks, let’s compare suggestive and arbitrary trademarks in an internet search:

• Suggestive Marks: An internet search for the registered trademark YOUR ACCOUNTANT does not reliably find the business that owns the trademark. Instead, the search returns results for businesses with similar names. This illustrates that suggestive trademarks, while protectable, may lack the uniqueness and strength of more distinctive marks.
• Arbitrary Marks: In contrast, an internet search for the arbitrary trademark BUILD ACCOUNTING yields multiple listings for businesses with the same name, along with one similar result for BUILT ACCOUNTING. While arbitrary marks (like BUILD ACCOUNTING) are stronger than suggestive marks, they still carry some limitations compared to fanciful trademarks.

Why Fanciful Trademarks Are the Strongest

Fanciful marks, such as XEROX or KODAK, stand out because they are invented words. These marks are inherently distinctive, making them the easiest to protect and enforce. When you search for a fanciful mark, the results almost always lead directly to the business associated with the trademark. This uniqueness provides a significant advantage in branding and legal protection.

Key Takeaways

1. Distinctive trademarks (fanciful and arbitrary) offer the strongest legal protection.
2. Suggestive trademarks are protectable but may face challenges in terms of uniqueness and search visibility.
3. Generic terms receive no protection and cannot be trademarked.

For businesses looking to build strong brands, choosing a distinctive trademark—especially a fanciful or arbitrary mark—can provide lasting value and a competitive edge in the marketplace.

Here is a YouTube video about this.

This blog is made available by Adams Law Office for educational purposes only. It is intended to convey general information and a general understanding of the law, not to provide specific legal advice. The blog discusses the state of law at the time of writing. Later events may change the law and/or analysis. This blog should not be used as a substitute for competent legal advice from a licensed professional attorney applied to your circumstances.