When you apply for a trademark, the United States Patent and Trademark Office examines where your mark falls on the distinctiveness spectrum, a sliding scale measuring how capable a mark is of identifying your goods or services. At the top of the spectrum (most distinctive) are fanciful, arbitrary, and suggestive marks, which are inherently distinctive and generally registrable. At the bottom are descriptive and generic marks, which may face refusals unless they have acquired distinctiveness. In the case of generic terms, they may be wholly incapable of registration. Understanding this spectrum is critical in choosing a mark that balances legal protection with marketing impact.
Here are the points on the spectrum, listed in order from strongest to weakest in terms of registrability and defensibility.
What it is: Coined/invented terms created to function as marks. (TMEP §1209.01(a)).
Registrability: Strongest—generally registrable on the Principal Register without evidence of secondary meaning.
Examples: KODAK (photographic goods), EXXON (petroleum), VERIZON (telecom), PEPSI (soft drinks), CLOROX (cleaners).
Practice notes: Extremely defensible, but marketing may require more education.
What it is: Common words used in an unrelated way (no descriptive connection to the goods/services). (TMEP §1209.01(a)).
Registrability: Strong—generally registrable without secondary meaning.
Examples: APPLE (computers), CAMEL (cigarettes), DOVE (soap), SHELL (fuel), AMAZON (retail services).
Practice notes: Great balance of marketing familiarity and legal strength.
What it is: Hints at a quality or characteristic—requires imagination, thought, or perception to connect the mark to the goods/services. (TMEP §1209.01(a)).
Registrability: Generally registrable without evidence of acquired distinctiveness under Section 2(f) of the Lanham Act. Such evidence can include long and exclusive use of the mark, substantial sales and advertising figures, consumer surveys, media coverage, or other proof showing that the public primarily associates the mark with a single source rather than with the product or service itself.
Examples: COPPERTONE (sunscreen), GREYHOUND (bus services), WHIRLPOOL (washing machines), RAY-BAN (sunglasses), AIRBUS (aircraft).
Practice notes: Often considered a sweet spot for branding and legal strength. Examiners distinguish suggestive from merely descriptive by whether the meaning is immediate or requires an additional mental step to relate the mark to the goods/services.
What it is: Immediately describes an ingredient, quality, characteristic, function, feature, purpose, or use of the goods/services. (TMEP §1209.01(b))
Registrability: Descriptive marks are refused on Principal Register absent a showing of acquired distinctiveness under Lanham Act §2(f) (discussed further below). An applicant may amend its application to the Supplemental Register if otherwise eligible.
Principal vs. Supplemental Register: The Principal Register is the USPTO’s primary registry, offering full trademark protections like presumptive nationwide rights, constructive notice, and eligibility for incontestability after five years. The Supplemental Register is a secondary list for marks that aren’t inherently distinctive (e.g., descriptive terms) but may gain distinctiveness over time; it provides more limited benefits and does not confer presumptive exclusive rights. TMEP §815 discusses the distinction further.
Examples: CREAMY (for yogurt), WORLD’S BEST BAGELS (bagels), BED & BREAKFAST REGISTRY (lodging listings), QUICK PRINT (printing services), AFTER-TAN (lotions).
Practice notes: Consider moving into suggestive territory via (i) evidence of secondary meaning under Section 2(f) or (ii) stylization/logo elements; otherwise, applicants may need to proceed without registration or look to rebrand.
What it is: The common (genus/class) name for the goods/services—or a key category of them—as understood by the relevant public. (TMEP §1209.01(c)).
Registrability: Never registrable on the Principal or Supplemental Registers.
Test for a generic term: A two-part inquiry is used to determine genericness: (1) what is the genus of goods/services at issue; and (2) does the relevant public understand the designation primarily to refer to that genus of goods/services? If so, then the goods/services will be considered generic, and registration will likely be refused. (TMEP §1209.01(c)(i)).
Examples: “BREAD” for bread; “LAW FIRM” for legal services; “EMAIL” for email services; terms that became generic in U.S. use such as ASPIRIN and ESCALATOR. (Outcome is jurisdiction- and context-specific.)
If consumers primarily see the designation as indicating source (not a product feature), an applicant can claim that distinctiveness has been acquired under Section 2(f) of the Lanham Act. This requires evidence that the consuming public in fact recognizes applicant's mark as a source-identifier with respect to the relevant goods/services. Such evidence can include: length/extent of use, sales, advertising and marketing, surveys, declarations from actual customers, etc. (TMEP §1212).
