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by Mark E. Musekamp

I often receive correspondence from clients in which they ask whether a particular mark is capable of becoming a federally registered trademark.  Unfortunately, many of the marks that clients propose would be difficult, if not impossible, to register as federal trademarks.  This news often blindsides clients who have already devoted substantial resources into the use of the mark.   Although the best way to prevent this from occurring is to contact an attorney before committing to a particular mark, this post will help individuals select a mark that can easily become a federally registered trademark.

Generally, there are two reasons that I inform clients that their mark will either be difficult or impossible to register as a federal trademark.  The first reason is that the mark is already used in commerce by another person or entity.  This problem can be remedied by performing a quick google search for the proposed mark and seeing if another person or entity is already using the mark in commerce.  A more exhaustive search can be conducted at the United States Patent and Trademark Office’s Trademark Electronic Search System (“TESS”).  Although conducting both of these searches will not guarantee that another person or entity is not using your mark in commerce, it may prevent you from investing substantial resources into a mark that another person or entity is openly and obviously using.

The second reason is that the proposed mark lacks the distinctiveness necessary to serve as a trademark.  Marks have five levels of distinctiveness.  The more distinctive a mark, the more protection the law gives to the mark and the more easily you may register the mark with the United States Patent and Trademark Office.  When selecting a mark, you should consider choosing the most distinctive mark imaginable.  These levels of distinctiveness, in order of most distinct to least distinct, are: 1) Fanciful, 2) Arbitrary, 3) Suggestive, 4) Descriptive, and 5) Generic.  Only Fanciful, Arbitrary, and Suggestive marks are inherently distinctive and capable of being federally registered as trademarks without a showing of something more.  The following is a chart that should aid you in selecting a strong mark that is capable of receiving federal trademark registration:

Level of Distinctiveness Definition Inherently Distinctive? Examples of Marks
Fanciful Coined or “made up” words, without a clear dictionary meaning. Yes EXXON oil, KODAK film, and XEROX copiers
Arbitrary Real words with dictionary meanings that do not describe or have a connection to the quality of the goods or services that they designate. Yes CAMEL cigarettes, APPLE computers, and DOMINO sugar
Suggestive Marks that call to mind some aspect of the products they designate, but require imagination, thought, or perception to reach a conclusion as to the nature of the goods. Yes COPPERTONE suntan oil, ORANGE CRUSH orange soda, and ROACH MOTEL insect traps
Descriptive One that immediately describes an ingredient, quality, characteristic or feature of the goods or services on which it is used, or that directly conveys information regarding the nature, function, purpose, or use of the goods or services. No, requires secondary meaning for trademark WHEATIES cereal and SUPER GLUE extra-strength adhesive
Generic A term that is the common name for a class or genus of goods No, generally not eligible for trademark SCREENWIPES for a cloth for cleaning computer screens and CRAB HOUSE for a crab restaurant

By following these guidelines, you may prevent yourself or your company from committing substantial resources to a weak mark that would be difficult, if not impossible, to register as a federal trademark.