Types of Trademarks
Trademarks vary in strength, based on distinctiveness. Strong marks are highly distinctive and easier to protect, while weak marks are less distinctive and harder to protect. Non-distinctive marks are neither registerable nor protectable. Five categories of distinctiveness are:
Fanciful - A coined or made-up word, which does not exist in the English and other languages, in any dictionary, to identify the source of goods or service. For example: Sony, Xerox, and Kinkos are coined words which otherwise have no meaning in the English language. Generally, these marks are given the strongest protection, but cost newly coined marks cost more in marketing costs in order to introduce to the public this new name and associate the name with the source of goods or services.
Arbitrary - A common word used to identify completely unrelated goods or services is considered arbitrary. For example, the use of the word APPLE to identify computers or LOTUS for software. Arbitrary marks are usually afforded strong protection within the specific related class of goods or services.
Suggestive - A word that invokes an image of the characteristics or qualities of the goods is considered suggestive. For example, OBSESSION for perfume, INTRIGUE for car, COPPERTONE for tanning lotion or CATERPILLAR for mechanized tractors. Suggestive marks are usually entitled to some protection.
Descriptive - A word that describes the characteristics, qualities (laudatory), or geographical or family origin of the product is considered descriptive. Descriptive marks must have become recognized (or acquire so-called "secondary meaning" by the public through continuous use and advertising) in order to be given trademark protection. For example PUBLIC STORAGE for providing rental storage space for the public, or INTERNATIONAL BUSINESS MACHINES for business machines and computers. An example of a laudatory mark is GOLD MEDAL for baking flour and an example of a geographically descriptive mark is BANK OF NEW YORK.
Generic - Generic words are not trademarks. Words being used to define the product or service, but not the source. For example, the use of APPLE for an apple fruit retailer would be considered generic. Many famous trademarks as a result of success have been improperly adopted by the public to mean the generic product. Thus, marks have been rendered generic and their trademark protection was irretrievably lost. Such generizied marks include aspirin, cellophane, dry ice, linoleum, and escalator. This is why XEROX Company has expended millions of dollars in advertising campaigns to strongly discourage the public's misuse of its XEROX mark as a verb ("Please xerox it for me") or a noun ("The xeroxes are better than the original"). To use a trademark properly and prevent it from becoming generic, it should be used as an adjective and be used in conjunction with the generic noun. ("This is a XEROX copier") The mark should also be in capital letters or different font in order to distinguish it from the plain text.
>> Choosing Trademarks
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