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Best practices in choosing and using a mark: choose a mark that is inherently distinctive.

Some marks are inherently stronger than others. When selecting a mark to use for your goods or services, consider that the "strength" of a mark falls along the following spectrum (beginning with the strongest): Fanciful, Arbitrary, Suggestive, Descriptive, and Generic.

  1. Fanciful Marks - A fanciful mark is a mark that has no meaning apart from its use as a mark and that does not inherently suggest or convey to the mind of the consumer what the goods or services might be. An example is KODAK used for camera related goods.
  2. Arbitrary Marks - An arbitrary mark is a mark has a common meaning outside its use as a mark, but its use as a mark has no relation to the common meaning. An example is the mark APPLE used for computer and phone related goods.
  3. Suggestive Marks - Suggestive marks do not immediately convey the meaning of the goods or services for which they are used, but they suggest them to the mind of the consumer. An example may be SQUEAKOZ! for toys that make a squeaky noise.
  4. Descriptive Marks – These are marks that merely describe something related to your goods or services. For instance, the mark LITTLE RED PILLS for cough medicine in the form of small red pills could be considered a descriptive mark. Descriptive marks are not considered inherently distinctive and, because of this, cannot be registered on the Principal Register until they have “acquired” sufficient distinctiveness.
  5. Generic Marks – Generic marks are marks that are incapable of serving a trademark function because they are the common or generic name for the goods or services. For example, you cannot register the word IBUPROFEN for ibuprofen pills because it is the common name for the goods.

In general, the higher up the spectrum your mark is, the stronger your mark and the more likely it will be “distinctive” enough to merit registration, all other considerations aside. The first three categories: Fanciful, Arbitrary and Suggestive marks, are considered “inherently distinctive.”

There is often a tug of war between a company’s marketing team and its legal team when it comes to trademarks. The marketing team wants to choose marks that immediately convey the idea of the goods or services to the mind of consumers, while the legal team prefers marks that are stronger and more easily protected. In general, we suggest that stronger marks (Fanciful, Arbitrary and Suggestive) are capable of conveying the idea of the goods or services to the minds of consumers as they are continually used (similar to how the word APPLE and KODAK now immediately convey to the minds of consumers phone and computer related goods and camera and printer related goods, respectively). However, if some middle ground must be found, we suggest choosing marks that are suggestive of the goods or services only, and not merely descriptive.