A trademark is categorized by the strength with which it identifies for consumers the goods or services associated with the mark. The stronger the mark, the more likely its owner may obtain a U.S. trademark registration, and the benefits that attach to it. Even non-traditional marks like scents, sounds, and colors may qualify as U.S. trademarks. 

  • Strong v. Weak Marks

    We classify a trademark as strong or weak depending upon where it fits within four categories of marks: Generic; Descriptive; Suggestive; and Fanciful/Arbitrary. 

    Generic

    Generic marks identify a category, not a particular brand, of goods or services. “Analgesic Tablets” is a generic word mark because it does not indicate a particular source of these tablets. As discussed earlier because we now use the term “aspirin” to denote analgesic tablets in general, the word mark “Aspirin” is also generic because it is no longer associated with a particular source of analgesic tablets. Generic marks are the weakest trademarks and are not legally protectable. 

    Descriptive

    Descriptive marks are not quite as weak as generic marks because they are more complex in providing a term or terms that describe the category of goods or services. “Soothing” describes the product category in the mark “Soothing Aloe Ointment”. It is a very weak mark because one expects aloe ointment to be described as “soothing”. “Mollifying Aloe Ointment” would be a slightly stronger mark because “mollifying” is less commonly associated with topical ointments than is “soothing”. “Mephitic Aloe Ointment” would be a strong descriptive mark not only because “mephitic” is not a commonly used descriptor, but also because it indicates the ointment is foul smelling and noxious. (It would also be useless from a marketing perspective.) 

    Suggestive  

    Suggestive marks contain information that does not overtly describe the good or service, but alludes to it, often in a subtle or ironic fashion. “Pronamel” toothpaste, for instance, does not describe the toothpaste, as the term “Whitening” might. The combination of “pro” and “namel”, however, conjures the promotion of healthy tooth enamel, which suggests a quality GlaxcoSmithKline wants consumers to associate with this product. Similarly, “Eyesite Optometry” is a suggestive service mark. “Eyesite” does not describe optometry services, but alludes to it, and a particular venue, using a playful homonym. 

    Fanciful or arbitrary

    These are the strongest trademarks because they are “inherently distinctive.” A mark is inherently distinctive if it does not merely: identify a category of goods or services; does not describe a category of goods or services; and is not overtly suggestive about a category of goods and services. “Viagra” is a fanciful mark because without knowing in advance the product with which it is associated, consumers would not infer from the it the branded product. The same is true for Propecia and Rogaine, neither of which marks describe or suggest hair loss medication. 

    Viagra, Propecia, and Rogaine are trademarked brands. The “generic” terms for the drugs with these brand names are Sildenafil, Finasteride, and Minoxidil, respectively. These generic terms are proper nouns that the U.S. Government has assigned to a particular drug ingredient or compound. These generic names cannot be protected as trademarks, and generic drug manufacturers will use them to identify their products, e.g., “Finasteride (comparable to Propecia)”.      

    Marks that are fanciful or arbitrary are most easily registered and protected. But keep in mind that the strongest marks (like Asprin, Kleenex) have the greatest risk of becoming generic, and potentially loosing their trademark protection. 

  • If consumers associate your trademark with a particular good or service, it distinguishes your good or service from similar ones, and is not confusingly similar to an existing registered mark, you should be able to register it at the U.S. Patent and Trademark Office. There are significant advantages to obtaining a U.S. trademark registration: 

    1. You are the presumptive owner of the mark as long as it remains in active use;
    2. You have the exclusive right to use the mark throughout the U.S.;
    3. Your mark is included in the searchable federal trademark database, putting competitors and other businesses on notice that the mark is registered and protected;
    4. You can place the symbol (R) next to all publications of your mark, putting the public on notice that the mark is registered and protected.

  • Most trademarks are words like “Quest Diagnostics” or a mix of words and a design like that for Empower weight loss solutions.

    It is also possible, particularly in the U.S.,  to protect non-traditional trademarks, like sounds, colors, and even scents, as long as the entity seeking protection can successfully establish that the sound, color, or scent allows consumers to identify its product or service, and distinguishes its product or service from others in the market. There are relatively few registered non-traditional marks. Among them are NBC’s  3-note chime, the pink hue of Owens Corning’s fiberglass insulation, and a floral fragrance applied to embroidery threads.