What is a Generic Trademark? What Are Descriptive, Suggestive, Arbitrary, and Fanciful Trademarks?

Not all brands are created equal. Some brand names are inherently stronger than others. That depends on where your brand is on the spectrum of distinctiveness—going from generic, descriptive to suggestive, arbitrary, and fanciful marks. 

Watch this video to understand the principles behind distinctiveness better so you can pick a strong brand for your new product or service or evaluate whether your current brand is inherently strong. 

As you will see, the strongest trademarks may not always be the most obvious or descriptive ones. Nevertheless, registering a trademark always helps to have something distinctive to set you apart.

I'm Andrei Mincov, the founder of Trademark Factory, and in this video, I'm going to walk you through the spectrum of distinctiveness for trademarks.

Explaining Trademark Distinctiveness

I will explain the general principles and then give examples of two fictitious products and services. There are five buckets on the spectrum of distinctiveness that your brand and trademark can fall into. The Trademarks Office would need to decide which buckets best fit you to treat your trademark legally.

Generic Trademark

Spoiler alert: there are buckets you NEVER want your trademark to fall into. OK. The first bucket is GENERIC trademarks. This is the weakest form of a brand. In most cases, it's not a brand AT ALL. It's just a common name everyone uses for the particular product or service you offer. You cannot trademark brands that are generic because if you were allowed to own a monopoly over a generic name, it would mean that nobody else could sell versions of the same product or service—simply because, to do so, they'd have to stop calling their products and services what they are.

For example, if you sell ice cream, you can't go and trademark the term "ICE CREAM." You can't trademark the word "BICYCLE" if you sell bicycles. If you are a fitness trainer, you can't trademark the phrase "FITNESS TRAINER." And so on.

Some brands start as regular brands and THEN become generic through use. I'm going to give you a few examples of brands that suffered from GENERICIDE that may surprise you because these names that are now part of our everyday language once used to be unique brands for innovative products offered by a single business. Ready?

Linoleum. It was the very first trademark to have ever become generic in 1878. Other famous examples include App Store, Aspirin, Cellophane, Dry Ice, Escalator, Heroin, Kerosene, Kleenex, Laundromat, Videotape, and Zipper. Google is also rapidly approaching this status since everyone seems to be “googling it.” 

Google has recently survived a genericness challenge in the US Supreme Court, but it doesn't guarantee that it won't become generic in the near future. Of course, even if that happens, the Google logo and other marks (like the Google Maps and Gmail names and icons) will still be copyrighted and trademarked by the company.

Descriptive Trademark

The second bucket is for CLEARLY DESCRIPTIVE marks. These marks are a step up from generic marks in that they no longer use the common word for the product or service itself. Instead, they use words that do nothing but clearly describe a feature or characteristic of the product or service. For example, you can't trademark the term "COLOR" if you sell printers. Likewise, if you sell legal services, you can't trademark "FLAT FEE."

In most countries, you would not be able to trademark descriptive marks. However, in the U.S., you may be able to trademark your descriptive trademark on the Supplemental Register. We have a video about the Supplemental Register.

The reason the Trademarks Office does not like descriptive trademarks is that if you were allowed to own a monopoly over such marks, it would mean that nobody else could sell their versions of products or services with the same features or characteristics—simply because to do so, they'd have to stop referring to these features and attributes by their common names. This can create confusion and unnecessary roadblocks for competitors.

The crucial difference between generic and descriptive brands is that with clearly descriptive brands, in addition to possibly being able to get them registered on the Supplemental Register in the U.S., you can get them registered on Principal Register in the U.S. and just written everywhere IF you can prove that your brand has acquired distinctiveness. This means that you can prove that most people in the market for your products or services, when they hear or see your brand think of YOUR products and services, not just ANY products or services with the same features. 

Here are some examples of clearly descriptive marks that acquired distinctiveness: NATIONAL CAR RENTAL, KENTUCKY FRIED CHICKEN, AMERICAN AIRLINES, PAYLESS SHOES. Initially, these names are descriptive, but because of their market reach, they became proper trademarks for their owners. 

A quick tip: proving that your descriptive mark has acquired distinctiveness could be very difficult and expensive. And with more and more trademarks being filed worldwide every year, it's getting more and more challenging to get to that level. This means it’s usually better to try to have a more distinctive trademark.

Suggestive Trademark

The third bucked is for a SUGGESTIVE trademark. They are a step up from descriptive marks. They ALLUDE to features and characteristics of your products and services but in a much more subtle way. Here are just a few examples of suggestive patterns: "BED, BATH & BEYOND," "PHOTOSHOP", "SCANSNAP," and "QUICKBOOKS."

You can sort of figure out WHY they chose that particular name, but it's not like having this specific name limits the freedom of their competitors to sell their products and services—as long as they use different words. And it's precise because they don't limit their competitors' freedom; suggestive marks are trademarkable.

So here's the kicker. Sometimes, the line between clearly descriptive and suggestive marks is very murky. It often boils down to an argument between you and the Trademarks Office. It is often subjective and inconsistent. Trademark Factory is a great example. We got the TRADEMARK FACTORY trademarked in Canada, the US, European Union, Brazil, Mexico, Russia, and New Zealand. In contrast, China and India refused registration as they thought the mark was descriptive.

Arbitrary Trademark

The fourth bucket is an ARBITRARY trademark. Arbitrary marks are dictionary words used for products and services that have nothing to do with the terms. In many instances, being described as “arbitrary” can have negative connotations. But regarding the Trademarks Office, “arbitrary marks” are seen as a positive. 

The most famous example is APPLE, as in the computer, phone, and software companies. While "apple" is a dictionary word, Apple the corporation is not in the business of selling apples, and neither are their competitors. For their products and services, "Apple" is an arbitrary mark.

Another example is "ADOBE." Again, they sell software, not mud bricks. For software, "Adobe" is an arbitrary mark. CANON for cameras. Canon cameras do not shoot balls to destroy enemies' fortresses. That's why the name is random.

DOMINOS may be a dictionary word, but it's an arbitrary mark for pizza restaurants. Chrome is a dictionary word, but it has nothing to do with web browsers. Finally, "CAMEL" for cigarettes. It's not that camels are well known for something that has anything to do with smoking. That's why it's an arbitrary mark. Because they have nothing to do with the products and services they are supposed to cover, random patterns are considered inherently strong.

Fanciful Trademark

Finally, the fifth bucket is for the FANCIFUL trademark. Fanciful marks are invented marks that have no meaning other than identifying specific products or services. For example, Kodak means nothing outside of it being a photography brand. 

Twitter means nothing outside of it being the name of a left-wing social-media platform. Exxon means nothing outside of it being an oil company. Cisco, Walmart, Marlboro, Pepsi, Audi, and Ikea are excellent examples of fanciful marks. Chances are, the most popular brands you can think of qualify as fanciful trademarks.

Trademark Distinctiveness Is Not Always Exact

So these are the five main buckets but know that many marks live between the suggestive, arbitrary, and fanciful buckets. They may not be completely random or fanciful, but it's not that they necessarily point to a feature or a characteristic of products and services. YouTube, Hewlett-Packard, Smith & Wesson, DreamWorks, and Uni-Ball are good examples.

We have the five buckets to make it easier for businesses (and trademark attorneys) to identify which of the buckets your brand is closer to. But many trademarks have a similar argument to be in several buckets. I hope this makes sense. So before we finish this off, let me give you two situations. 

Hypothetical Scenario #1: Pencils

Let's say you make pencils. Right, your business is you make and sell pencils. So a generic name for your products would be... PENCIL.

A descriptive name for your products would be... SHARP or ALWAYS SHARP or something like that. A suggestive name could be DRAWSTIX with an X at the end. You see, misspelling a name doesn't make it fanciful. It's still examined as if it was correctly spelled. An arbitrary name for your pencils could be "PIZZA." Or "HELICOPTER." Or "BANANA." 

An example of a fanciful name for your pencils could be BELLION, QRSTPUV, or GRX27. 

Hypothetical Scenario #2: Accounting Firm

Or here's the second situation. You run an accounting firm. A generic name would be... ACCOUNTING. A descriptive term would be ON-TIME ACCOUNTING, or simply ON-TIME. A suggestive name could be COUNTING BEANS or COUNTING BEANS ACCOUNTING SERVICES. Finally, an arbitrary name for accounting services could be PIZZA ACCOUNTING, ZEBRA ACCOUNTANTS, or LIPSTICK CHARTERED ACCOUNTANTS.

Adding the word "accounting" or "accountants" doesn't change the nature of the mark because it would be a part of the mark you'd have to disclaim anyway since it's a generic word for the services you offer. So the only factors that remain, Pizza, Zebra, or Lipstick, in this case, are arbitrary since they have nothing to do with accounting services. 

And finally, fanciful names for accounting services could be Colang, Tremulbite, or Bonkoto ACCOUNTING. Again, these words mean nothing except that they are supposed to identify your brand.

Recap: Trademark Distinctiveness

So once again, the final summary. Generic marks are impossible to trademark. Descriptive marks are difficult to trademark; if you get one, you will have a hard time enforcing it against your competitors since descriptive spots are inherently weak. Suggestive effects are doable, but often you need to work on convincing the Trademarks Office that your print is suggestive rather than descriptive. 

Arbitrary and Fanciful marks are the strongest to enforce and the easiest to trademark. So if you're just trying to develop a new brand for your business, your products, or services, have that in mind. Get a brand you can own. Get a brand you can trademark.  And if you're serious about protecting your brand, use Trademark Factory® to help you register it as a trademark.

First, we will prepare a registrability opinion based on whether your trademark is distinctive enough and whether there are any other previously filed or registered trademarks that would stand in your way. Suppose we find any concerns with your first choice. 

In that case, you can always get a full refund or do what most of our clients do in these situations: you can keep sending us, at no extra charge, your other ideas for the brands you have in mind until you pick a brand you love that we tell you is trademarkable. 

So again, if you're serious about owning your brand, use Trademark Factory. We're the only firm in the world that will help you trademark your brand with a guaranteed result for a guaranteed budget without wasting your time and money on trademarks that don't go through. 

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