Strenght of TrademarkA Key to Trademark Strength is Distinctiveness

The strength of trademark is critically important to any entrepreneur, inventor or business launching a product or service in the marketplace.  Goods or service trademarks, in the overwhelming majority of cases, can only be trademarked if they are distinctive. A distinctive trademark is one that distinguishes the goods or services upon which it is used from the goods or services of others. A non-distinctive trademark, or descriptive trademark or generic trademark,  is one that merely describes or names a characteristic or quality of the goods or services. There are five categories of distinctiveness in trademark law.  These categories fall along a spectrum of distinctiveness, from most distinctive to least distinctive:

If a word, name, symbol, or device is capable of distinguishing the source of those goods, products and/or services from those of another source, it has a high probability of trademark registration with the USPTO. For this reason it is important to be very thoughtful when selecting a trademark.

Trademarks that are highly distinctive are usually easy to pick out from other trademarks because of a striking dissimilarity to the other trademarks. Think of surfing in the winter time in San Diego. You will inherently see the overwhelming majority of surfers in black and blue wetsuits. If a surfer comes along wearing a bright pink wetsuit, there is no doubt that this pink wetsuit will stick out and be distinctive in the crowd. While such an example may not seem to be related to trademarks, when you are selecting a trademark, you should always think of the pink wetsuit and how to select a trademark that will stand out and become distinctive compared to other trademarks.

This is not to say that your trademark must be vastly distinctive. A distinctive trademark can come in varying degrees. A proposed trademark that is not highly distinctive can still be registered with the USPTO. However, the less distinctive the trademark is, the smaller its chances of being successfully prosecuted.

Fanciful, Arbitrary or Suggestive Names Inherently Distinctive

Goods or services that employ names, phrases or slogans that are fanciful, arbitrary, or suggestive are generally considered inherently distinctive, which may ensure heightened success that the trademark will register with the USPTO without needing to provide evidence of secondary meaning.

Descriptive Names must have Secondary Meaning to Function as a Trademark

On the other hand, if goods or services that employ names, phrases or slogans that are descriptive, the name, phrase or slogan identifying the good or service must have acquired secondary meaning to function as a trademark.

Generic Names, Phrases or Slogans are not entitled to Protection

Generic names, phrases or slogans (and also design elements) can never gain trademark protection.  With respect to advertising and marketing strategies, there is often a battle between the legal advantage of having a highly distinctive trademark and a trademark that will generate sales. Obviously, employing a generic or descriptive trademark is much easier to associate with the product, good or service because it immediately describes the product, good or service. Many people believe that having a highly distinctive trademark will make it difficult for the general public to associate with the good, product or service and therefore not generate sales.  This may possibly be true; however, an entrepreneur or business owner must not forget the immense long term value and goodwill a distinctive, unique trademark holds.