The following is an edited transcript of my video Why Some Trademarks Receive More Protection Than Others.
- words
- logos
- slogans
- colors
- sounds
- shapes (product or product packaging)
- building shapes
A name generally doesn’t have to be unique in the whole universe of brands or words – only in the relevant brand or industry – to qualify for stronger protection. Another factor is the context of the words: it depends on what are the products or services the name will be use with. ‘Apple’ for phones or computers is an arbitrary word. It doesn’t tell you anything about the products or services. But if you had an apple farm or an apple juice manufacturer and you use the word ‘apple’, it’s not a strong name at all. The analysis in that instance would be much different because you have to look at it through the lens of the products or services that are at issue.
There is a scale of strength for trademarks:
- At one end of the scale are generic words. They’re not eligible for protection at all. If I had a camera company and I called it Cameras, I’d get zero protection for that word. I can’t stop anybody from using that word. It literally describes the category of things that I’m making or selling.
- A descriptive term is weaker, but it is entitled to some protection, and over time it can become a stronger mark, but is not inherently distinctive from the outset. A descriptive name might be Camera Supply for a website selling camera products, camerasupply.com. It describes what the service is, and that’s going to be a weaker but generally protectable name.
- A suggestive name is further along on the spectrum and is inherently distinctive because it’s not a made up or arbitrary word, but it alludes to or suggests something about the product or services. Netflix tells you that it has to do with movies, it has to do with the internet, but because it’s a made up combination of portions of words, it’s overall a suggestive name.
- An arbitrary name is something like Apple. Again, it’s a word, but it’s not a common word used in the industry or describing a feature of the products or services.
- At the other end of the scale are coined or fanciful words, generally the strongest protection. Those are entirely made up words like Kodak. A word made from nothing—totally new—is going to get the strongest type of trademark protection in general.
If you look at studies about the most well known and most valuable brands, you will see that very few of them are descriptive words. It is much easier to become a household brand name when the word is suggestive, arbitrary, or coined. If you have a weaker name, there’s a whole list of issues that you might encounter with your branding and with enforcing and stopping others from using similar names and terms.
