By Ted D. Karr

Managing Partner, Berkeley Law & Technology Group, LLP

The Various Strength of a Potential Trademark

A trademark’s strength depends on how well it identifies and distinguishes a particular source of goods or services. The trademark spectrum runs from strongest to weakest:

Strongest: Fanciful/Coined Marks These are invented words with no dictionary meaning, like “Xerox,” “Kodak,” or “Exxon.” They are inherently distinctive because they exist solely to identify the brand.

Strong: Arbitrary Marks Real words used in ways unrelated to the product, such as “Apple” for computers or “Shell” for gasoline. The word exists but has no connection to what is being sold.

Moderate: Suggestive Marks These hint at product qualities without directly describing them, requiring some imagination to connect the mark to the product. Examples include “Coppertone” for suntan lotion or “Greyhound” for bus transportation.

Weak: Descriptive Marks These directly describe the product’s characteristics, ingredients, or intended use. “Cold & Creamy” for ice cream or “Tender Vittles” for soft cat food are descriptive. They can become protectable only after acquiring “secondary meaning” through extensive use and consumer recognition.

Weakest: Generic Terms These are the common names for products or services themselves, like “computer,” “restaurant,” or “aspirin” (which lost trademark protection). Generic terms can never be trademarked because they are necessary for competition.

The key factors that make a trademark distinctive include uniqueness in the marketplace, lack of direct connection to the product’s function or characteristics, and the ability to signal a single commercial source to consumers. Strong marks are easier to protect, enforce, and register, while weak marks face more challenges in gaining legal protection and preventing competitors from using similar terms.

Can I Register a Generic Trademark?

Generic Marks: No, you cannot register a generic trademark with the USPTO. Generic terms are refused registration because they are the common names for products or services and cannot function as trademarks. Generic marks can never acquire trademark protection because they are necessary for fair competition.

Can I Register a Descriptive Trademark?

Descriptive Marks: It depends.  Generally no, but there are exceptions. The examining attorney will refuse registration of a mark as merely descriptive if it immediately describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services. For example, “CREAMY” for yogurt or “WORLD’S BEST BAGELS” for bagels would be refused.

However, descriptive marks can potentially be registered in two ways:

1. Supplemental Register: The Supplemental Register offers partial protection for marks ineligible for full registration, including descriptive marks that have not yet acquired distinctiveness.
2. Acquired Distinctiveness (Secondary Meaning): If a descriptive mark has been used extensively and consumers recognize it as identifying a particular source rather than just describing the product, it may qualify for registration on the Principal Register. This requires substantial evidence of consumer recognition.

The USPTO’s examination process will identify these issues. The USPTO cannot provide preliminary legal advice as to whether they will register a particular mark; filing an application is the only way to obtain a decision on whether the USPTO will refuse registration.

If you are considering a descriptive mark, you should conduct a thorough search and consider whether you can demonstrate acquired distinctiveness through use, or whether starting with a more inherently distinctive mark would be more strategic.

How to Identify If My Mark Can Be Registered on the Principal Register 

To identify marks that can be registered, you need to conduct a comprehensive analysis using multiple steps and resources:

1. Conduct a Comprehensive Trademark Search

USPTO Database Search: Complete a search before applying for a trademark registration to make sure your trademark is available to register for your particular goods or services, and to make sure that no other trademark conflicts with it. Possible Grounds for Refusal of a Mark | USPTO Use the USPTO’s trademark search system at uspto.gov/trademarks/search.

Search Strategy:

• Search for identical marks
• Search for similar-sounding marks (phonetic equivalents)
• Search for marks with similar meanings
• Search for marks that create similar commercial impressions
• Search across related goods/services categories, not just identical ones

2. Evaluate Distinctiveness

Assess your mark’s strength:

• Fanciful/Coined: Made-up words (strongest, most registrable)
• Arbitrary: Real words unrelated to the product (strong, registrable)
• Suggestive: Hints at qualities without directly describing (registrable)
• Descriptive: Directly describes the product (generally not registrable without acquired distinctiveness)
• Generic: Common name for the product (never registrable)

3. Check for Absolute Bars to Registration

Review whether your mark:

• Is merely descriptive of the goods/services
• Is primarily geographically descriptive
• Is primarily merely a surname
• Is merely ornamental
• Is deceptively misdescriptive
• Creates a likelihood of confusion with existing marks

4. Analyze Likelihood of Confusion

Consider the principal factors:

• Similarity of the marks in sound, appearance, and meaning
• Relatedness of the goods/services
• Trade channels and classes of purchasers
• Strength of the prior mark

5. Use Professional Resources

• Trademark attorneys can conduct more sophisticated searches and have relationships with professional search firms that can provide comprehensive clearance reports
• Trademark attorneys can identify potential conflicts you might miss

Key Takeaway

The most registrable marks are those that are inherently distinctive (fanciful, arbitrary, or suggestive) and do not conflict with existing registrations. A thorough search and legal analysis before filing can save time and money by identifying potential issues early in the process.  If you would like assistance in selecting and registering a trademark, please contact us at tm@bltg-ip.com or 503-439-6500.  One of our trademark attorneys will be happy to assist you.