A trademark can be nearly anything that can distinguish one’s goods. So what makes a “good” trademark?

The first thing to keep in mind is that a trademark might be very catchy but difficult to protect. If it cannot be protected then anyone can use it, and then it loses its value for you. It is therefore a good starting point to consider the protectability of a trademark when choosing one.

Trademarks are classified as being generic, descriptive, suggestive, arbitrary, or fanciful. An example of a generic trademark would be the single word “Muffins”. An example of a descriptive trademark would be the phrase “Boston Baked Beans”. An example of a suggestive trademark is “Microsoft”. An example of an arbitrary trademark is “Apple”. An example of a fanciful trademark is “Lollapalooza”.

A generic trademark cannot be protected or registered. This makes sense. If you could protect “Muffin” as your trademark, no one else could sell muffins (or, they could, but they couldn’t call them “muffins”). That would negatively impact consumers. So, generic trademarks are out.

Descriptive trademarks generally also cannot be protected or registered. “Boston Baked Beans” describes the food you are selling; it also describes the food that others might be selling, and like the generic example, you shouldn’t be able to monopolize that description. However, unlike generic trademarks, descriptive trademarks can be protected and even registered, but only if you can show some proof of the trademark having achieved secondary meaning. That is, even though the trademark is descriptive, the consuming public has been exposed to it to such a degree that it now associates that trademark only with you. “The Maine Hunting Shoe” is an example of a descriptive mark that, through years of use, has become exclusively associated with the L.L. Bean Company, and so it is a protected (and registered) trademark of that company.

Suggestive, arbitrary, and fanciful trademarks are considered to be inherently distinctive and are per se protectable and registerable. Their protections increase in order. A suggestive trademark “suggests” things about the product. In the example given above, “Microsoft” is a suggestive trademark because (at least when it was first used) it suggested that it was “software” for “microcomputers”. Arbitrary trademarks receive even more protection. An arbitrary trademark has nothing to do with the product, and one cannot determine what the product is just by looking at the mark. In the example given above, “Apple” is an arbitrary trademark for electronic devices. There is no connection between that word and what is being sold under that trademark. Fanciful trademarks are the strongest trademarks. Not only do they have nothing to do with the product, they aren’t even real words. “Lollapalooza”, in the above example, is a made-up word. Finally, trademarks used over a long period of time and recognized by a large segment of the consuming public may be considered “famous marks”; these have the strongest protection.

When choosing a mark, though it is tempting to pick something descriptive (so that your customers will know what you are selling), it is much better to pick a suggestive, arbitrary, or fanciful trademark instead.

Anthony D. Pellegrini, Esq
Anthony Pellegrini Rudman Winchell


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