|In order to qualify for trademark protection, your trademark must be “distinctive.” A distinctive trademark is one that is capable of identifying and distinguishing your goods or services from those of your competitors. A trademark may be inherently distinctive. For example, a trademark may consist of invented or coined words such as Kleenex, Kodak and Kotex, or it may become distinctive as a result of the consuming public’s recognition of the trademark. Kentucky Fried Chicken is an example of a trademark that on its own is not very distinctive but has acquired the kind of recognition that allowed for its trademark registration. Every trademark will fall into one of five categories of descriptiveness, and the level of protection afforded to your trademark will depend on which of the five it falls under. |
The more a trademark is descriptive of the goods or services sold in conjunction with that mark, the weaker the trademark. If you had a fruit stand, for example, and called it “Apple”, you would have no trademark rights over that mark. The reason for this is that it would be unfair to allow a merchant to pull from the public domain words and phrases necessary for others to effectively compete in the market. If the word “Apple” were a registered trademark when used in connection with a fruit stand, other merchants would be forced to come up with a different way of describing apples to the consuming public - an obvious unfair outcome!
By contrast, if a merchant sells computers and uses the mark “Apple” he will retain strong trademark rights over that mark. This is because in this case, “Apple” does not describe the good that this merchant sells, and other computer sellers do not require the use of the word “Apple” to effectively compete in the computer market.
From weakest to strongest, the following is a list of the five categories of descriptiveness: (1) Generic Marks = no protection; (2) Descriptive Marks = no protection in most cases; (3) Suggestive Marks = protected; (4) Arbitrary Marks = very protected; and (5) Fanciful Marks = the strongest of trademark groups.
To learn more about these categories and the trademark process, vistit our Test Your Trademark pages and use our Brand Meter, our interactive trademark tool, to assist you in choosing a strong mark for your business.