October 15, 2014 | Posted in:IP Law, Trademarks

A trademark is a name or logo that is used in connection with the sale of products or services to identify the source of the goods or services.  Trademarks can be inherently strong or can become strong trademarks through effective and widespread marketing and sales.

On a scale from 1 to 5, the strength and, therefore, the protectability of the trademark can be ranked from generic (no protection) to fanciful (the most protection).

Terms Used in Trademarks

Generic terms are the weakest terms and, in fact, can never really be trademarks so they are really not even on the scale. Examples are words such as “chair” or “table” for the furniture industry.  Moving up from generic terms, the next rung of the ladder are descriptive trademarks.

Descriptive trademarks describe the nature or a characteristic of the goods or services and, therefore, cannot serve as trademarks until they have acquired distinctiveness or what in trademark law is called secondary meaning through extensive and substantially exclusive use over time.  For example, the term oatnut for bread describes ingredients that go into making the product.

A step above the descriptive trademark is a suggestive term which gives a hint as to the goods or services but does not bring to mind an immediate recognition of the product.  An example of a suggestive trademark is “Park ‘N Fly” for vehicle parking near airports and transportation by van.  Suggestive trademarks are considered weak trademarks but they are protectable.

The next category on the scale may surprise you.  Arbitrary terms are common terms that are used incongruously such as “Apple” for computers and are stronger than suggestive trademarks.  Many people think that just because a term is common, it can’t be a trademark, but that not’s true.  Common words can be trademarks; they just can’t be trademarks for the things they are about.

The strongest and, therefore, the most protectable trademarks are called fanciful.  These are “coined” terms created solely to serve as trademarks.  A made up name such as Exxon, which is a word that did not exist before, is fanciful, inherently distinctive and stands at the top of the trademark ladder.

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