Trademarks fall along a spectrum of strong to weak
To function as a trademark or brand, a word or phrase has to be distinctive in the marketplace.
Trademarks fall along a spectrum of strong to weak. A trademark can acquire secondary meaning - and gain strength - as it is used by customers and the company.
Company names in each category are suggestions only, not fact or legal opinion. Boundaries along the spectrum of trademarks are often fuzzy.
Fanciful or arbitrary
The mark language is fanciful or coined, invented to distinguish a product, service or company in the marketplace; or arbitrarily uses common words or a phrase with no direct connection to the product or service. Both are strong and inherently distinctive.
Fanciful mark examples: Kodak, Xerox, Google, Glassdoor, Keysight Technologies, Clorox, Yahoo, Zynga. Arbitrary mark examples: Apple, Apple Corps (The Beatles record company), Lotus, Babe Ruth, Canon, Uber, Marmot, Redwood Credit Union, Sun, Blackberry, Camel, Black and White, Amazon, Zip Car.
Suggestive
A mark can suggest some quality or attribute of a product or service, requiring imagination or thought from the consumer to make a connection. Such a mark provides an inherent marketing advantage.
Examples: Twitter, Lyft, Fidelity, REACH, Autodesk, Exchange Bank, SolarCraft, VinePRO, BioMarin Pharmaceutical, Microsoft, Safeway, Yelp, Jaguar, Citibank.
Descriptive or surname
Marks that describe a product or service, or use a surname, may initially not be protectable. But they can attain distinctiveness and strong secondary meaning through use and marketing.
Examples: Whole Foods, General Motors, Postal Service, Entrepreneur magazine, Windows (operating system), Park ‘N Fly, The Ultimate Bike Rack, Labor Ready, Indoor Environmental Services, McDonald’s, Codding, W. Bradley Electric, Bradley Real Estate, Macy’s, Korbel, Sonoma Bank, Bank of San Francisco.
Generic
Names not qualified for trademark protection aren’t inherently distinctive. Companies can still use these names, but cannot defend them as trademarks.
Examples: Coffee mug (for a vessel to hold coffee), chocolate fudge soda, modem (for a device that carries data), WWW, shredded wheat, best beer in America (tried by Samuel Adams, 1999), best coffee in America (tried by Dunkin’ Donuts, 2012), crab house.
Genericide
A distinctive mark can become generic - distinctive disappearance of a brand - through common or expressive use, called “genericide.”
Examples: aspirin, cellophane, zipper, monopoly (the game), escalator.
Xerox successfully defended against generic use of its mark as a verb for “to photocopy.” Twitter seeks to protect its brand from genericide by publishing strict usage guidelines.
