The process of registering a trade mark is different across the pond in the United States. Trade marks in the US are divided by categories, which are ranked by distinctiveness. This system allows the United States Patents and Trademarks Office (USPTO) to evaluate trade mark applications. The 5 categories are listed as follows:
- Fanciful trade marks: Fanciful trade marks are made-up words which are invented to be used as a trade mark name. They don’t have a meaning or are associated with anything. Good examples of fanciful trade marks include Polaroid and Exxon. From a legal point of view, once fanciful trade marks have become reputable, they would be easier to protect due to their uniqueness. It would be easy to find and prevent competitors from using a similar or identical mark.
- Arbitrary trade marks: Arbitrary trade marks are words that have a real, common meaning. However, the meaning of the mark is unrelated to the goods or services offered under the mark. Good examples of arbitrary trade marks include Apple and Dove. Apple is a fruit, but it doesn’t have any relation to computer hardware produced by Apple.
- Suggestive trade marks: A suggestive trade mark is named after a characteristic of the product or service. There has to be an imaginative element to the trade mark so that the consumers can make a connection with the goods or service. Good examples of suggestive trade marks include Netflix and Microsoft. Netflix suggests online films in a suggestive and unique manner. A potential problem with suggestive trade marks is that some of them can be seen as descriptive by others.
- Descriptive trade marks: Descriptive trade marks are descriptive of the goods or service. They can partly or wholly describe the goods or services being sold under the mark. Good examples of descriptive trademarks include British Airways and Best Buy. For a descriptive mark to acquire substantial protection by the USPTO, the brand has to develop a “secondary meaning”, which is developed through “significant advertising budget” and over a 5 year period.
- Generic trade marks: Generic trademarks cannot be protected as they are simply a generic description of the product or service. The USPTO has decided that categorical terms should be freely available for public use. Good examples of generic trademarks include Band Aid and Thermos. Certain marks, like the examples provided, were once protected trade marks, but they have been afflicted with “genericide”. This is when a word becomes so generic it loses its legal power as a trade mark.
Our infographic below summarises the five categories with examples of famous trade marks in each category.
It should be noted that the generic trade marks shown in the image above have all been afflicted with ‘genericide’.
Now, which category of trade marks should you choose in the US. It is unanimously agreed that fanciful and arbitrary trade marks are the way to go. They are easier to register, and make it easy for you to enforce your protection in the future. However, most companies would prefer to register a suggestive or descriptive trade mark so that consumers can make an instant connection with the goods and service sold under the mark. From a marketing perspective, it would take considerable time and effort to build a brand reputation with a fanciful or arbitrary mark. Hence the preference for the other two categories.
When looking to register a trade mark in the US, you should speak to a trade mark attorney in order to get professional advice. They will help you choose the right mark, which is sound from a legal perspective and is also marketable.
