There are three main factors:
- How well does the mark connect with consumers?
- How likely is the mark to be protectable?
- Is the mark “clear” of prior users of confusingly similar marks, as determined by a trademark clearance search?
How well the mark connects with consumers is a blend of the inherent qualities of the mark and the quality of the
product or service on offer. A “bad” mark may limit the consumer uptake of a great product, and a “good” mark may not
save bad product.
Potential marks exist on a spectrum of “distinctiveness.” More distinctive marks are more immediately protectable, but
any type of protectable mark may become highly important and valuable resources.
Generic terms are not protectable. Generic terms are the typical commercial names for a product, like “apple” or
“fruit” for the fruit apple. They cannot be protected for the goods or services for which they are generic, and every
competitor has the right to use these terms for those goods or services.
Descriptive marks provide immediate information about the product or service for which the mark is used. Descriptive
marks may be only weakly protectable initially, but can become strong over time. Examples of initially descriptive marks
that have become highly protectable over time include the mark RAWLINGS for athletic equipment (a surname), the mark
BOSTON BEER COMPANY for beer (a geographically descriptive term), and the mark PREMIUM GROW for fertilizer (a laudatory
Suggestive marks suggest something about the product or service that is sold under the mark to the consumer, but does so
in a way that requires a “mental pause” or reasoning step for the consumer to figure out what the connection is between
the mark and the product. An unusual compound word, like FRANKWURST for sausages, would be considered suggestive. A
suggestive mark, unlike a distinctive mark, is immediately and strongly protectable. Discerning the line between
descriptive and suggestive marks can be a close call, but carries significant legal weight.
Arbitrary and fanciful marks are the conceptually “strongest” marks. Fanciful marks are
those, like EXXON, that have no meaning prior to their creation and adoption as a mark. Arbitrary marks are terms that
contain meaning, like APPLE, but applied to products or services that are unrelated to that typical meaning, like
The best mark helps your business succeed. Sometimes, that is an inherently strong arbitrary or fanciful term; in other
situations, a descriptive mark that communicates more about a product or feature to the consumer may be the most