How to Pass the 'Distinctive' Trademark Test: Examples and Tips

To register your trademark, it must be "distinctive" rather than generic. This means that it can't simply describe the product or service. For example, you can't sell bananas and trademark the name "Bananas, Inc." If that were possible, one company would monopolize everyday words like "banana," making them unavailable for others to use.

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Instead, your trademark should stand apart from common descriptions. A good example of a distinctive trademark is "Apple" for computers. The word "Apple" is not descriptive of computers, and using it this way makes it unique and memorable. On the other hand, a company named "Apple" selling apples would not be distinctive.

The U.S. Patent & Trademark Office (USPTO) uses five categories to determine trademark distinctiveness. We’ll start with the weakest category and work our way to the strongest.

Categories of Trademark Distinctiveness

Probably Not Eligible for Registration

Generic Names

Generic names cannot be trademarked because they simply refer to what the product is. For instance:

• "Clock" for a wristwatch

• "Tea" for a warm herbal drink

• "Water" for bottled water

These terms describe everyday items and can't be monopolized by one company.

Descriptive Names

Descriptive marks provide some information about the product, such as its quality, function, or ingredients. These are also weak candidates for trademark protection. Examples include:

• "Easy Bake Pie Crust" for a frozen pie crust

• "Instant Dinner" for a microwave meal

These names directly convey what the product is or does, which makes them difficult to register as trademarks.

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Probably Eligible for Registration

Suggestive Names

Suggestive marks hint at qualities of the product without explicitly describing them. They require a bit of imagination from the consumer to understand the link between the mark and the product. Some examples are:

• "Chicken of the Sea" for tuna

• "Wite-Out" for corrective fluid

• "Legal GPS" for legal navigation tools

Suggestive marks are often a close call for the USPTO, and some descriptive marks may try to pass as suggestive. For example:

• SPEEDI BAKE for frozen dough: The USPTO found that it suggests a quality of the product—quick and easy baking—without explicitly stating it.

• NOBURST for liquid antifreeze: The USPTO considered this suggestive because it hints at preventing bursts without directly describing the product's function.

Arbitrary Names

Arbitrary marks are dictionary words used in an unexpected way, unrelated to the product. This makes them stronger trademarks. Examples include:

• "Apple" for computers

• "Blackberry" for mobile phones

• "GAP" for clothing

These words don’t have any inherent connection to the products they represent, making them highly distinctive.

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Fanciful Names

Fanciful marks are the strongest type of trademarks. They are made-up words that did not exist before the brand was created. Examples include:

• "Microsoft"

• "Google" (Note: While the word "googol" represents a large number, "Google" as a brand name is distinctive.)

• "Xerox"

Fanciful marks are inherently unique, making them excellent candidates for trademark protection.

Considerations for a Strong Trademark

A strong trademark should be distinctive from others in the market, regardless of pronunciation or translation. It should not create confusion for consumers or resemble existing trademarks.

Trademark Strength Through Actual Use

Trademark strength can also grow organically over time through actual use. Brands like McDonald's have become strong trademarks, even though "McDonald" is a common surname. The company has built such strong brand recognition that it is now synonymous with fast food. This demonstrates how consistent use and consumer recognition can significantly strengthen a trademark.

Action Step: When creating a trademark, aim for something that is either suggestive, arbitrary, or fanciful. Avoid generic or purely descriptive terms to increase the likelihood of registration.

Final Thoughts

Understanding the spectrum of trademark strength can help you position your brand for successful registration. Whether you opt for a suggestive, arbitrary, or fanciful mark, making sure it’s distinctive can save you time, money, and potential legal issues down the line.

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Legal GPS Pro

Protect your business with our complete legal subscription service, designed by top startup attorneys.

• ✅ Complete Legal Toolkit
• ✅ 100+ Editable Contracts
• ✅ Affordable Legal Guidance
• ✅ Custom Legal Status Report

Learn more