The strength of a trademark determines the degree of legal protection to which a mark is entitled, including whether the mark is eligible for registration on the PTO’s Principal Register. The stronger the mark, the more protection the mark can receive. In trademark law, a trademark’s ability to signify to the consumer the source of the item on which the mark is placed is called “secondary meaning.”
Trademark law refers to a mark that has “secondary meaning” as “distinctive.” This is because a mark with “secondary meaning” distinguishes or identifies the source of the goods on which it is placed, and is therefore “distinctive” of the goods. The amount of distinctiveness that a mark has determines the “strength” of the mark. Some marks, particularly those that are arbitrary or fanciful, are inherently distinctive due to their very nature. Other marks, such as descriptive marks, are not distinctive at all and the mark owner must demonstrate that the mark has obtained distinctiveness (by proving secondary meaning) in order for the mark to be eligible for the greatest amount of legal protection that is available.
A Fanciful Mark is a made-up word that was invented for the sole purpose of functioning as a trademark. Fanciful marks have no other meaning or purpose besides being a trademark. Fanciful marks are the strongest type of mark. Kodak and Xerox are fanciful marks. An Arbitrary Mark is a word that has a common meaning, and has no relation to the goods or services being sold under the mark. Apple and Sun (both for computers) are arbitrary marks. Fanciful and arbitrary marks are “inherently distinctive” and are afforded the greatest amount of legal protection.
Suggestive Marks suggest a quality or characteristic of the goods and services sold under them. Suggestive marks require some imagination or thought for the consumer to reach a conclusion as to the exact nature of the goods. Suggestive marks provide the distinct marketing advantage of enabling the consumer to easily associate the mark with the goods in a customer’s mind, short of describing the goods outright. Tender Vittles (for moist cat food), Microsoft (for micro processing software) and Coppertone (for suntan lotion) are all suggestive marks. Suggestive marks are the second strongest types of marks and are afforded the second greatest amount of legal protection available.
Descriptive Marks (often referred to as merely descriptive) merely describe some portion of the goods or services to be sold under the mark. Merely descriptive marks are really not trademarks at all, as they do not identify the source of the goods or services. Merely descriptive marks are not entitled to protection (nor registration on the Principal Register), unless the mark owner can prove that the mark obtained secondary meaning. Secondary meaning exists when the mark has been so widely used that the consuming public identifies the mark as indicating the source of goods or services offered under it. Marks that attain secondary meaning are distinctive of the goods or services offered under the mark. Vision Center and Fiber One are descriptive marks that have obtained secondary meaning.
Generic Marks describe a category of a product or services, and, as such, are incapable of functioning as a trademark. Generic marks are not trademarks and are not entitled to protection even if they are advertised so heavily that secondary meaning can be proven in the minds of consumers. Trademark law prohibits a manufacturer or service provider from claiming an exclusive right to use words that generically identify a product. Further, a valid trademark may become generic if the consuming public misuses the mark sufficiently for the mark to become the generic name for the product. Former trademarks that lost their ability to serve as a mark and became the generic name for a product include aspirin and kleenex.