The following is an edited transcript of my book video Building a Bold Brand Chapter 4: Spectrum of Marks.
Let’s assume you have a list of creative and inspired names for your product or company. You’ve sent several to your trademark attorney for consideration and you’re ready to make a final decision. Before you do that, there’s another key consideration. Some brands and trademarks are entitled to greater protection than others. Think of it as a sliding scale with the type of brand name determining a lot about its scope of protection. There are five elements in this sliding scale and their respective strength (strongest to weakest):
- Coined trademarks (completely new and made up terms)
- Arbitrary trademarks (real words that are unrelated to the goods or services at issue)
- Suggestive trademarks (words that relate to the goods or services, but that are not descriptive of them)
- Descriptive trademarks (used to refer to a product or service or to its functions or characteristics)
- Generic (words that are commonly used to refer to a good or service in its entirety) (generic terms aren’t trademarks at all, as they get no legal protection)
Coined, arbitrary and suggestive names are generally able to become registered, are given the strongest protection, and are thus considered by some to be the most desirable.
Descriptive trademarks may sometimes be registered, but are generally afforded less protection. For this reason, descriptive marks are generally considered weaker.
Finally, generic trademarks are the weakest—in fact, they’re not really trademarks at all. They’re entitled to no protection.
Why do I suggest suggestive marks? It tells you something about the business, but it does not hit you directly over the head. While arbitrary or coined marks can acquire even more legal protection than suggestive names, such terms may be more challenging to market and to promote, because consumers may not be able to connect the dots and therefore may not know what that arbitrary or coined brand name represents.
