Taxonomy of Federal Trademark Protection
Wednesday, 25 November 2015
by Seth Gomm, JD MBA
• Generic mark – a word by which something is commonly called (e.g., clothes or aspirin or cellophane). These cannot be registered.
• Descriptive mark – a mark that conveys an immediate idea of the ingredients, qualities, or characteristics of a good or service (e.g., Vision Center for a business offering optical goods and services). Descriptive terms may be registrable (if secondary meaning is shown) but are usually afforded a narrow scope of exclusivity and are generally considered to be weak marks.
• Suggestive mark – a mark which requires thought, imagination, and perception to reach a conclusion as to the nature of goods or services it designates (e.g., Coppertone for sunscreen). A suggestive mark is registrable and its scope of protection depends upon the uniqueness the mark achieves through use in commerce.
• Arbitrary mark – a mark that uses words in an arbitrary way, and where there is no association between the words used and the goods or services they designate (e.g., Apple for a computer). These marks receive a broad scope of protection.
• Coined or Fanciful mark – a mark that has been created or fabricated, and is meaningless aside from the product or service is designates (e.g., Kodak for film). A coined or fanciful mark receives the strongest form of trademark protection.
Trademark applicants must also be aware if their mark is “confusingly similar.” Under the Lanham Act, the USPTO may deny registration of a mark if it is “confusingly similar” to another mark used in commerce. This is often a subjective determination made by the USPTO examiner. In addition, a holder of an existing mark (whether or not it is registered) may seek to oppose the registration of a confusingly similar mark.
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