A highly effective trademark is one that strongly identifies you as the owner of your goods or services. A weak mark is one that is not distinctive or that is already being used by others.
To create a highly effective trademark, you should determine where your proposed mark fits within the hierarchy of marks.
THE HIERARCHY OF MARKS
- Fanciful Marks. These are the strongest marks because they are inherently distinctive. These use a word or symbol that has no established meaning. These marks initially are the most difficult when it comes to creating the association between the mark and the product. Fanciful Marks acquire the meaning you give them through your marketing and branding. The benefit of using a fanciful mark is that it is the easiest to protect and offers you the broadest protection. Examples include: Google, Xerox, Addidas, Rolex.
- Arbitrary Marks. These marks use words that have a common meaning but are being used to identify products or services that are not obviously related. Arbitrary marks are afforded a broad scope of protection against third-party use. Examples include: Apple Computers, Amazon, Camel Cigarettes, Dominoes Pizza, Canon Copiers.
- Suggestive Marks. Suggestive marks use words or symbols that suggest some quality or characteristic of the products or services, but do not directly describe the product or service. These are marks that, when applied to the goods or services, require imagination, thought or perception for the customer see the connection to the goods or services. Examples include: Petsmart, Greyhound, Microsoft, Kitchenaid.
- Descriptive Marks. These marks directly describe the good or services being provided. These are the most difficult to register and protect. The only way to successfully register a descriptive mark is if you have used it long enough that it has developed a distinctive secondary meaning where consumers identify the mark with a single source. Examples include: Sports Illustrated, Pizza Hut, Sharp.
- Generic Terms. These are terms that the purchasing public understands primarily as the common or class name for the goods or services. These terms are incapable of functioning as trademarks, and are not registrable. Examples include: Diet Soda, Super Glue, Classes Online for classes provided via the Internet, Pizza.com for pizza ordering and delivery services. Escalator and cellophane are examples of terms that once functioned as trademarks but that became generic.
Surnames/Names. Trying to trademark a name is similar to trying to trademark a descriptive mark. The test for determining whether a mark is primarily merely a surname depends on the primary significance of the mark as a whole to the purchasing public. Factors include: (1) whether the surname is rare; (2) whether the term is the surname of anyone connected with the applicant; (3) whether the term has any recognized meaning other than as a surname; (4) whether it has the “structure and pronunciation” of a surname; and (5) whether the stylization of lettering is distinctive enough to create a separate commercial impression.