The United State Patent and Trademark Office will not approve just any name that is applied for as a trademark. The USPTO classifies marks on a spectrum of distinctiveness. In order of least distinctive to most, a mark can be considered “generic,” “descriptive,” “suggestive,” “arbitrary,” or “fanciful.” USPTO is more likely to award a trademark application if a name more distinctive.
Generic names are rarely given protection. For instance, a company that makes steel and tries to trademark the name “The Steel Company,” for a company that produces steel, will not succeed. Steel is a term generically used to describe the products being sold, in this case.
Descriptive names are also difficult to register with the USPTO. For instance, “The Great Big Steel Company” is difficult to register because it merely describes qualities of the company or its products. Generally, descriptive marks are entitled to mark protection, but only if they have gained what has been termed “secondary meaning.”? That is to say, the name has become so popular that despite the descriptive nature, the public associates the product with a particular company. An example is International Business Machines or IBM. Fledgling companies generally are not well known enough to have attained secondary meaning.
Suggestive marks, which often hint at the quality or another aspect of the business, are much easier to register. Trademark practitioners often call Suggestive marks the “sweet spot;” you still tell your consumers what sort of products you are offering, but not so blatantly as to be denied trademark registration. For instance, “Herculean Steel” may be more likely to be registered by the USPTO than “Strong Steel,” but conveys a comparable meaning. Herculean suggests the steel is strong, without outright describing it as strong. Nevertheless, the line between an identifying mark and a suggestive one is difficult to draw. Microsoft, which produces software for microcomputers, and Citibank, which renders financial services, are some well-known instances of suggestive marks. Brand owners usually like these names because it gives the consumer a good sense of what the company does without the need for further education or advertising to disseminate the name for the particular service or product.
Arbitrary marks are words used in a way unrelated to their regular everyday meanings. “Chocolate Steel” would be considered an arbitrary mark, and would be easy to register. The textbook example of the arbitrary trademark is Apple Computers - not to be confused with Apple Records. Of course, “Apple” being used as a trademark for food products would be generic, and very difficult to register.
Fanciful marks usually are the easiest trademarks to be approved. This mark may be a made-up word or a seldom-used word that has nothing to do with explaining the products. “Ecstimate” would be a fanciful mark for a steel company. Some examples of fanciful marks are Google, Yahoo!, Shopify, Exxon, and Spotify.
USPTO may also reject marks due to the following reasons:
- it is geographically descriptive of where you do business
- it is similar to an already registered name
- it uses an individual’s name or likeness
- it is the title of a single movie or book,
- it's disparaging
- it's a foreign term that results in a generic or descriptive English term when translated
- It dilutes a famous trademark