The courts use a “spectrum of distinctiveness” to identify a mark’s strength. Trademarks are divided into five categories, from strongest to weakest: (1) fanciful, (2) Arbitrary, (3) Suggestive, (4) Descriptive and (5) Generic. A determination of a mark’s distinctiveness is a question of fact and must be evaluated with respect to the mark’s goods/services. For example, the mark BRILLIANT may be ‘descriptive’ on diamonds, ‘suggestive’ on furniture polish, and ‘arbitrary’ on canned applesauce.
Fanciful marks are terms that have been invented for the sole purpose of functioning as a trademark or service mark. They do not have a dictionary definition and are entitled to the most protection the Lanham Act can provide. An example of a fanciful mark is Xerox because the word did not exist prior to the owner’s use of the mark.
An arbitrary mark uses a common word in an unfamiliar way. An example of an arbitrary mark is APPLE for computer products. The term apple would be generic for the sale of fruit products, but when used as a trade name for an electronics company, it has no descriptive qualities of the goods sold. Arbitrary marks are given the same level of protection as fanciful marks and require no secondary meaning to achieve protection.
Suggestive marks are those that, when applied to the goods or services at issue, require imagination, thought, or perception to reach a conclusion as to the nature of those goods or services. A suggestive term differs from a descriptive term, which immediately tells something about the goods or services. Suggestive marks, like fanciful and arbitrary marks, are eligible for registration on the Principal Register without proof of secondary meaning
Example:
- Chicken of the sea
- Intelligent Quartz for watches
A descriptive trademark describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services. Descriptive trademarks must acquire distintiveness through secondary meaning before they will receive protection. Secondary meaning is achieved when the consuming public comes to recognize the trademark as an indication of source. There is a fine line between suggestive and descriptive trademarks. If the mark imparts information directly, it is descriptive, but if it stands for an idea which requires some operation of the imagination to connect it with the goods, it is suggestive.
Generic trademarks comprise of terms that name the kind of product or genus offered by the business. Generic terms do not receive any protection under federal law or common law and are not eligible for registration on the Principal Register under §2(f) or on the Supplemental Register. The classic test for determining if a mark is generic is the “who are you – what are you” test. If the trademark tells the public what goods are offered, then competitors will all provide the same answer and the mark will not identify the source. An example of a generic mark would be the name “clothing store” for the sale of apparel products or “sports warehouse” for a sporting goods store.
