Recently, the United States Supreme Court agreed to hear a case in which Jack Daniel’s sued a dog toy company for trademark infringement. The case presents the Supreme Court with an interesting question regarding the intersection between free speech and trademark law. It also highlights how important trademarks are for businesses throughout America.
Trademarks can be valuable assets for businesses of any size. Having a trademark can protect your business’s brand from being used by competitors. If you are considering applying for a trademark, it is essential to know the different trademark types and the level of protection each provides.
A strong trademark can help a Florida business protect its name, logo, slogan, product line, or service brand from confusing use by competitors. But not every brand name receives the same level of protection. Some trademarks are strong from the start, while others may be difficult or impossible to register.
The main trademark strength categories are fanciful, arbitrary, suggestive, descriptive, and generic. Fanciful, arbitrary, and suggestive marks are generally stronger. Descriptive marks may need proof that customers connect the mark with one source. Generic terms usually cannot function as trademarks.
This aligns with USPTO guidance that strong trademarks are usually suggestive, fanciful, or arbitrary, while descriptive and generic terms are weaker.
Is Your Brand Name Strong Enough to Protect?
A business name can sound good and still be hard to protect. Before you invest in a logo, website, packaging, ads, or signage, check where your name sits on the trademark strength spectrum.
Quick answer
The strongest trademarks are usually made-up, unrelated, or suggestive. The weakest marks directly describe the product or use the generic name for what is being sold.
Trademark Strength Spectrum
Invented words created for the brand. These are often highly protectable because they had no prior meaning.
Real words used in an unrelated way, such as a common word applied to unrelated goods or services.
Names that hint at a feature or benefit but require imagination to connect with the product or service.
Names that directly describe a quality, feature, location, ingredient, or purpose of the goods or services.
Common names for the product or service itself. These usually cannot be owned as trademarks.
Protecting a business name
A business name should be searched before launch. A strong name is not just available with the state; it should also avoid confusing similarity with existing brands in related goods or services.
Protecting a logo or design
A logo may be protectable when it identifies your brand source. Keep clean files, design ownership records, and written rights from designers or agencies.
Protecting a slogan
A slogan can function as a trademark when customers connect it with one source. Generic advertising phrases are usually harder to protect.
Protecting a service brand
Service businesses may need service mark protection for names, logos, and slogans connected to consulting, hospitality, technology, healthcare, legal, construction, or other services.
Before You Choose or Register a Trademark
Helpful Records to Keep
- First-use dates and launch records
- Logo files, brand guidelines, and design agreements
- Website pages, ads, packaging, labels, and brochures
- Florida and USPTO search notes
- Product or service descriptions
- Domain, social handle, and brand ownership records
Red Flags to Review
- The name directly describes what you sell
- The name is a common term in your industry
- A competitor uses a similar name or logo
- The logo was created without clear ownership terms
- The mark is used inconsistently across platforms
- You are expanding outside Florida without a broader search
Need Help Choosing or Protecting a Trademark?
BrewerLong can help Florida business owners review trademark strength, search risks, registration options, contracts, and brand protection strategy.
Purpose of a Trademark
A trademark is a word, phrase, symbol, design, or any combination of the prior that represents a business, service, or product. The primary purpose of a trademark is to prevent companies from creating brand confusion in an attempt to gain a competitive edge.
What Types of Trademarks Are There?
There are four different kinds of trademarks. Distinct trademark types provide different levels of legal protection. The four types of trademarks are arbitrary or fanciful, suggestive, descriptive, and generic.
Arbitrary or Fanciful Trademarks
Arbitrary or fanciful trademarks provide businesses with the highest level of protection. For the law to consider a trademark arbitrary or fanciful, the trademark must be unique. In other words, the word, phrase, symbol, design, or combination must have been created for the use of the trademark holder. Words or names already in use are not arbitrary or fanciful.
Pepsi is a classic example of a fanciful trademark. Before Pepsi branded the name, the word Pepsi had no meaning. The term was truly distinctive and unique. As a result of the novelty and uniqueness of the word, no other company can make a reasonable claim that they accidentally infringed on the trademark. The word Pepsi exists only to identify Pepsi products.
Suggestive Trademarks
Suggestive trademarks do not receive the same level of protection as arbitrary or fanciful trademarks. However, they are still relatively well protected. To be considered suggestive, a trademark must have some connection to the product or service it represents without simply describing a characteristic. For example, the term four-wheeled would not be a suggestive trademark because it merely describes the vehicle’s number of wheels.
The term Charger is an example of a suggestive trademark. Though the word charger was already used when Dodge filed for the trademark, “Charger” implies that the car is fast without outright stating the trait.
Descriptive Trademarks
Descriptive trademarks provide the least amount of legal protection. Descriptive trademarks directly identify a trait of the product in some way. These types of trademarks can be difficult to register because many other products can share the same properties.
Sometimes descriptive trademarks can acquire a distinctive meaning over time through use by a company. The term Coca-Cola is an example of this. Coca-Cola is simply a cola made from coca leaves. The term is merely descriptive. However, over time the term became closely associated with a specific brand of drink.
Generic Trademarks
Generic trademarks can not be registered and receive no legal protections. Terms that simply name what a product is are generic.
An example of a generic trademark would be naming a line of ball cap products hats. The term hats just names what the product is. It would be unfair to allow a single company to own the use of the term.
Contrast hats with the term Lids. While lids describe objects that cover something, people did not traditionally use it in connection with hats until the company Hat World Inc. trademarked it. Now, any use of the term lids used commercially in connection with hats would violate the trademark.
Summary of Trademarks
| Trademark Type | Distinctiveness | Protection Level | Notes |
|---|---|---|---|
| Fanciful | Entirely invented | Highest | Strongest protection |
| Arbitrary | Real word, unrelated | Highest | Strong and protectable |
| Suggestive | Implies product trait | Moderate | Requires imagination |
| Descriptive | Directly describes | Weak, only protectable with secondary meaning | Often requires proof of distinctiveness |
| Generic | Common name | None | Never protected |
Importance of Protecting a Trademark
Once you have a trademark registered, it is critical to protect it. The concept of genericide describes a process where a once-protected trademark becomes generic over time. Usually, genericide happens when a trademarked term starts to represent an entire category of products.
The term zipper is an example of genericide. At one point, zipper represented a specific brand. Merely five years after the trademark was granted, B.F. Goodrich was no longer able to maintain the trademark. This loss was due to the wide use of the term zipper to describe every type of clasp locker.
Any type of trademark can fall victim to genericide. Fiercely protecting your trademark, like Jack Daniel’s suing a dog toy company, may seem extreme. However, fierce protection may be necessary to avoid genericide.
BrewerLong Can Help
If you need help registering a trademark or protecting one that already exists, BrewerLong can help. Our experienced attorneys share the goal of providing an outstanding customer experience. We give every client the close personal attention they deserve so we can provide clear and practical guidance through their most complicated legal situations. Contact BrewerLong today, and we will focus on the law so you can focus on your business.
FAQs:
What are the main types of trademarks?
The main trademark strength categories are fanciful, arbitrary, suggestive, descriptive, and generic. Fanciful and arbitrary marks are usually the strongest. Suggestive marks can also be strong. Descriptive marks are weaker unless they gain distinctiveness over time. Generic terms usually cannot be protected as trademarks.
What is the strongest type of trademark?
Fanciful trademarks are often the strongest because they are invented words created to identify a brand. Arbitrary marks can also be very strong because they use a real word in an unrelated business context. The USPTO describes fanciful, arbitrary, and suggestive marks as stronger trademark choices.
Can a descriptive trademark be registered?
Sometimes. A descriptive mark may be difficult to register on the Principal Register unless it has acquired distinctiveness. The USPTO explains that the Supplemental Register can list certain non-mark designations, such as descriptive words, that may eventually become a mark.
Can a generic term be a trademark?
Usually, no. A generic term names the product or service itself, so one business cannot usually prevent competitors from using it. For example, a company selling hats generally could not own “hats” as its trademark for hats.
What is the difference between a trademark and a service mark?
A trademark identifies goods, while a service mark identifies services. Many people use the word “trademark” broadly for both. A Florida business selling products may need trademark protection, while a business offering services may need service mark protection.
Can I register a trademark in Florida?
Yes. Florida allows trademark and service mark registration through the Florida Department of State, Division of Corporations. State registration may help with protection inside Florida, while federal registration through the USPTO may be better for businesses operating or expanding beyond Florida.
Should I search a trademark before using it?
Yes. A search can help identify similar names, logos, slogans, or service marks before you invest in branding, packaging, signage, websites, ads, or product launches. This can reduce the risk of rebranding, refusal, or infringement claims.
Can BrewerLong help with trademark selection and protection?
Yes. BrewerLong can help Florida business owners review brand names, assess trademark strength, prepare registration strategy, respond to trademark issues, and protect valuable business identity assets.
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