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The Trademark Distinctiveness Spectrum

From strongest to weakest, the five categories are:

1. Fanciful Marks (Strongest)

Fanciful marks are invented words with no prior meaning — created solely to function as a trademark. Because they have no meaning before being adopted, they are considered the most distinctive and receive the broadest legal protection.

Examples: Kodak (cameras), Xerox (copiers), Keurig (coffee brewers), Zappos (shoes), Nikon (cameras)

2. Arbitrary Marks (Very Strong)

Arbitrary marks are real, existing words used in a context completely unrelated to the goods or services. Because the word has no logical connection to the product, the mark is highly distinctive and receives strong protection.

Examples: Apple (computers and electronics), Amazon (retail), Grey Goose (vodka), Subway (restaurants), Target (retail stores)

3. Suggestive Marks (Strong)

Suggestive marks hint at a quality or characteristic of the goods or services without directly describing them. They require some imagination to connect the mark to the product. Suggestive marks are inherently distinctive and registrable, but they occupy a middle ground — and it is often not clear-cut whether a mark is suggestive or merely descriptive.

Examples: Greyhound (bus line — suggests speed), Mustang (cars — suggests power), Coppertone (tanning lotion — suggests a tan), Netflix (streaming — suggests internet + films)

4. Descriptive Marks (Weak)

Descriptive marks cross a significant boundary — they are not inherently distinctive. A descriptive mark merely describes a characteristic, quality, feature, or purpose of the goods or services. These marks cannot be registered as trademarks right away.

However, descriptive marks can acquire distinctiveness — also called “secondary meaning” — through long and extensive use in commerce. Once consumers come to associate the mark with a specific source, it can become protectable.

Examples: Best Buy (retail stores), Bank of America (banking), Brooklyn Brewery (beer) — all valid and enforceable today because they have acquired distinctiveness, but none were protectable at first.

It is also important to know that surnames are often treated as descriptive marks and require proof of secondary meaning to be registrable. Laudatory terms like “best,” “super,” and “prime” are also considered descriptive.

5. Generic Terms (Not Protectable)

Generic terms are the common name for a product or service and can never acquire distinctiveness. They cannot become enforceable trademarks — ever. Allowing one company to own a generic term would prevent all competitors from using the ordinary name for their product.

Examples: “Computer” for computers, “Coffee” for coffee, “Bicycle” for bicycles.

It is worth noting that a once-distinctive trademark can become generic over time if the public begins using it as the common name for a product. This is sometimes called “genericide.” Classic examples include Aspirin, Escalator, and Zipper — all formerly registered trademarks that lost protection.

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Why Does Distinctiveness Matter?

Where your mark falls on the distinctiveness spectrum has real, practical consequences:

• Registrability — Generic and merely descriptive marks cannot be registered on the USPTO’s Principal Register without proof of acquired distinctiveness.
• Enforceability — Stronger marks are easier and less expensive to enforce against infringers. A fanciful or arbitrary mark gives you broader protection than a suggestive or descriptive one.
• Scope of protection — The more distinctive your mark, the wider the range of similar marks you can prevent others from using.

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Choosing a Strong Trademark

When I work with clients on trademark selection, I generally recommend aiming for a fanciful or arbitrary mark whenever possible. These marks offer the strongest protection and are the least likely to face a descriptiveness refusal from the USPTO.

That said, there are legitimate business reasons to choose a more descriptive name — it may be easier for customers to understand at a glance what you do. If that is the case, it is important to understand the limitations upfront and plan accordingly.

A few practical tips when selecting a trademark:

• Avoid terms that simply describe what your product or service does
• Avoid geographic terms (e.g., “Michigan Auto Parts”)
• Avoid primarily surname marks (e.g., “Smith’s Coffee”)
• Avoid laudatory terms like “best,” “premium,” or “superior”
• Consider invented or arbitrary words — they offer the strongest protection

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Frequently Asked Questions

Can a descriptive mark ever become registrable?

Yes — through acquired distinctiveness, also called secondary meaning. If a mark has been used extensively and exclusively for a long period of time, and consumers have come to associate it with a single source, the USPTO may allow registration. This typically requires substantial evidence of long-term use, advertising, and consumer recognition.

What is the difference between suggestive and descriptive?

This is one of the most frequently litigated and debated questions in trademark law. The key distinction is whether imagination is required to connect the mark to the product. Suggestive marks require a mental leap — descriptive marks do not. The line between the two is often not clear-cut, and reasonable people can disagree.

What happens if my trademark application is rejected as merely descriptive?

You have options. You can argue that the mark is actually suggestive, not descriptive. You can amend your application to the Supplemental Register. Or, if you have sufficient use in commerce, you can argue acquired distinctiveness. I help clients navigate these situations regularly.

Can I trademark a surname?

Surnames are treated similarly to descriptive marks — they are not inherently registrable. A surname can become registrable if it acquires secondary meaning through long and exclusive use. “Ford,” “McDonald’s,” and “Dell” are all examples of surname marks that have acquired distinctiveness.

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Not Sure Where Your Trademark Falls?

Evaluating trademark distinctiveness is one of the first things I do when working with a new trademark client. Getting this right before you file can save significant time, money, and frustration.

Contact me to discuss your trademark or get started with a trademark search and application.