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Arbitrary marks An arbitrary trademark is usually a common word which is used in a meaningless

context (e.g. "Apple" for computers). Such marks consist of words or images which have some dictionary
meaning before being adopted as trademarks, but which are used in connection with products or services
unrelated to that dictionary meaning. Arbitrary marks are also immediately eligible for registration. Salty would
be an arbitrary mark if it used in connection with e.g. telephones such as in Salty Telephones, as the term
"salt" has no particular connection with such products.
Arbitrary marks

These are names that exist in popular vocabulary, but have no logical relationship to the goods or
services for which they are used. The pairing of the mark with the particular category of goods or
services should appear to be random. Examples include APPLE for computer, BEEFEATER for gin,
COMET for kitchen cleaner, and JAGUAR for a car. Whether a word is arbitrary or not has everything
to do with the context in which it is used. Obviously, the term "apple" used to sell a rounded edible
pome fruit of a tree is a generic term, and not trademarkable. Similarly, use of the phrase "Comet
Watch" for a newsletter describing the activities of celetial bodies with long tails pointing away from
the sun would not be considered arbitrary, but rather descriptive or suggestive.
An arbitrary mark is a trademark that consists of a word which is used in a way that has nothing to do
with its meaning. It will be a real word. However, the use of the word will have nothing to do with its
actual meaning. Arbitrary marks are the strongest type of trademarks. They are given the broadest
form of protection. Arbitrary marks are inherently distinctive and the owner need not show secondary
meaning to be entitled to protection for the mark because arbitrary marks bare no connection to the
underlying goods and services. However, the protection to arbitrary marks exists as long as they are
not confusingly similar to earlier marks.
The logos APPLE for computers, LOTUS for software, and SUN for computers are examples of
arbitrary trademarks.
A fanciful mark (also called a arbitrary mark) is a term that was created for the sole purpose of
functioning as a trademark or service mark. Such marks comprise words that are either unknown in
the language (e.g., PEPSI, KODAK, EXXON) or are completely out of common usage (e.g.,
FLIVVER). These marks are considered ―inherently distinctive‖ and thus deserving of the broadest
level of protection under trademark law.
Fanciful marks are trademarks that are made-up words that
were invented strictly to be used as a trademark. They are also known as arbitrary mark. A fanciful
mark has no connection with the goods or services it is used in connection with. Fanciful marks are
the strongest type of trademarks and are given the broadest protection. It can be considered as the
strongest type of trademark only when they are not confusingly similar to previous marks. Fanciful
marks are considered inherently distinctive because they bare no connection to the underlying goods
and services. The owner of the mark need not show that they have secondary meaning in order to be
entitled to protect the mark.
fanciful marks
Comprise terms that have been invented for the sole purpose of functioning as a trademark or service
mark. Such marks comprise words that are either unknown in the language (e.g., "Pepsi", "Kodak",
"Exxon") or are completely out of common usage (e.g., "Flivver").A fanciful / inherently distinctive
trademark is prima facie registrable, and comprises an entirely invented or "fanciful" sign. For example,
"Kodak" had no meaning before it was adopted and used as a trademark in relation to goods, whether
photographic goods or otherwise. Invented marks are neologisms which will not previously have been found in
any dictionary.
Suggestive marks
A suggestive trademark tends to indicate the nature, quality, or a characteristic of the products or
services in relation to which it is used, but does not describe this characteristic, and requires
imagination on the part of the consumer to identify the characteristic. Suggestive marks invoke the
consumer’s perceptive imagination. An example of a suggestive mark is Blu-ray, a new technology of
high-capacity data storage.

What is a suggestive mark?
There are several categories that are used in referring to a mark. One of these categories is known
as ―suggestive.‖ A mark that is suggestive is related to, and suggestive of, some quality or
characteristic of the goods and services. It does not actually describe the quality or characteristic,
mind you, but it alludes to it.
There is a fine distinction between suggestive marks and descriptive marks, which actually do
describe some quality or characteristic of the goods and services. The key to this distinction is that a
consumer must use a little imagination to see how the suggestive mark relates to the quality or
characteristic of the goods and services, whereas no imagination is necessary with a descriptive
mark. Examples of marks which have been found to be suggestive rather than descriptive include
GREYHOUND (as used with bus lines) and CITIBANK (as used with financial services).
While suggestive marks are not as strong as arbitrary and fanciful marks, they are still provided
relatively broad protection (as long as they are not confusingly similar to previous marks). Suggestive
marks are considered to be inherently distinctive, just like arbitrary and fanciful marks, and the owner
therefore does not have to show that the mark has acquired any secondary meaning in order to be
entitled to protect the mark.
In addition to suggestive marks, the other relevant categories of marks are arbitrary or fanciful marks,
descriptive marks and generic marks.
suggestive mark

Word, picture, or symbol that only suggests but does not describe some aspect of an associated good or
service. For example, 'Diehard' for a car battery hints-at but does not explicitly describe its expected longevity.
Suggestive marks are considered distinctive in their own right in copyright law, and do not require evidence of
a secondary meaning for legal protection as a trademark. See also descriptive mark.
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A suggestive mark alludes to or hints at (without describing) the nature or quality of the goods. For
example, Roach Motel suggests, without describing, the nature of a trap for catching insects.
Coppertone suggests, without describing, the results of using a brand of suntan oil. Rain Dance does
not describe a car wax but it suggests that rain will "dance" off the wax. Like fanciful (made up terms)
and arbitrary marks (words that do not match the goods – for example Arrow for shirts or Apple for
computers) , suggestive marks are also inherently distinctive and can be registered without further
evidence that consumers associate the mark with the goods (referred to as secondary meaning).
Suggestive marks are close cousins to descriptive marks. A descriptive mark describes a product or
service, or its purpose, function, use, nature, quality, characteristics, ingredients or geographic origin.
For example, Beef & Brew describes what is available at a restaurant. Vision Center describes a
place where eyeglasses can be purchased. Bufferin describes a product that consists of buffered
aspirin. Shake 'N Bake describes the method of using a food product. Chap Stick describes a stick-
shaped compound used for chapped lips. All of these marks are descriptive of goods or services.
Marks that are merely descriptive will only obtain protection if the trademark owner can prove
secondary meaning.
Suggestive marks are not as strong as fanciful and arbitrary marks, but are nevertheless good marks as they,
like fanciful and arbitrary marks, are considered "inherently distinctive." A suggestive mark is one that hints at
the products in a clever way, but does not actually describe the products. Examples of suggestive marks are
FROOT LOOPS® (for breakfast cereal), JOIE DE VIVRE™ (for a toy store), and SATURDAY'S CHILD™ (for a
children's clothing store).
"Merely descriptive" marks, the next on the spectrum, are only protectable if they have acquired
secondary meaning. In the absence of secondary meaning, the United States Patent and Trademark
Office (USPTO) will not register a descriptive term, and courts will not recognize it as a trademark for
the purpose of enforcing it against third parties. A mark is considered merely descriptive when it
consists only of a term or symbol that describes the intended purpose, function, uses, nature or
desirable characteristic of the products. Examples of marks for which the USPTO refused registration
as merely descriptive include UN-CURL (for hair care preparation for straightening hair), WEB
BUSINESS (for prerecorded videos, audio cassettes, CD-ROMs, and laser discs dealing with
products and strategies on the Internet), LATIN AMERICAN PEOPLE DEVELOPMENTS (for
magazines in the field of providing information regarding Latin Americans), and PATENT &
TRADEMARK SERVICES, INC. (for legal representation in the area of intellectual property).
Laudatory terms (e.g., BEST, RELIABLE, TASTY) are usually considered to be merely descriptive.
The rationale behind refusing registration of merely descriptive terms is that such terms should
remain available for public use, and no one person should be able to preclude others from using
them. Refusing registration for such terms is also consistent with the function of trademarks, that is,
providing a distinctive identifier of source.
An otherwise descriptive mark acquires secondary meaning and may be registered if consumers
have come to associate the mark with one particular source, and no other source. This may occur
where the mark is used in trade for a significant period of time or where the owner of the mark
expends significant time and energy in making the mark known to the public through advertising and
marketing efforts. A trademark owner must prove secondary meaning before an otherwise merely
descriptive term or symbol will be treated as a protectable mark. A customer survey is often useful in
providing secondary meaning, but is not required.
Descriptive marks
A descriptive mark is a term with a dictionary meaning which is used in connection with products or
services directly related to that meaning. An example might be Salty used in connection with saltine
crackers or anchovies. Such terms are not registrable unless it can be shown that distinctive
character has been established in the term through extensive use in the marketplace (see further
below). Lektronic was famously refused protection by the USPTO on ground of being descriptive for
electronic goods.
A trademark or service mark that describes some characteristic of the product or service with which it is
associated. For instance, "Jiffy Lube" describes a purportedly fast lube service. Descriptive trademarks are
harder to protect, at least until the owner can demonstrate that consumers associate the mark with the source
of the goods or services (a status referred to as a secondary meaning). (See also: secondary meaning,
Supplemental Register)
Trademarks that describe the ingredients, qualities, features, purpose or characteristics of a product or service.
These marks are not inherently distinctive, and thus do not receive trademark protection unless they acquire
distinctiveness through secondary meaning. Even if they qualify for trademark protection, descriptive marks are
the weakest marks possible, and do not receive as broad of legal protection as suggestive, arbitrary and
fanciful marks. Examples of descriptive marks include: BEEF & BREW for a restaurant, LASERGAGE for a
laser measurement device, PIZZAZZ for pizza, and WORLD BOOK for encyclopedias. In contrast to
suggestive marks, a mark that is merely descriptive immediately conveys knowledge of ingredients, qualities,
or characteristics with no imaginative leap required. If a composite mark is not 100% descriptive, then the mark
as a whole is not "merely descriptive."
What is a descriptive mark?
There are several categories that are used in referring to a mark. One of these categories is known
as ―descriptive.‖ A mark that is descriptive simply describes some quality or characteristic of the
goods and services. As such, descriptive marks are never inherently distinctive and the mark’s owner
must show that the descriptive mark has acquired secondary meaning in order to be entitled to
protection of that mark. During the time that a trademark owner is working to build up secondary
meaning for a descriptive mark, the mark may still be federally registered, although this registration
will be on the Supplemental Register rather than the Principal Register.
Marks which are arguably descriptive but which have since acquired the necessary secondary
meaning include WINDOWS (for computer software using windows) and SHARP (for televisions).
In addition to descriptive marks, the other relevant categories of marks are arbitrary or fanciful marks,
suggestive marks and generic marks.

Definition Edit
A descriptive mark is a trademark or service mark that is not inherently distinctive and identifies
some function, use, characteristic, size or intended purpose of a product or service.

Overview Edit
For a descriptive mark to merit trademark protection, the party claiming protection must demonstrate
that the mark has gained secondary meaning among the relevant consuming public.

Descriptive marks directly inform the consumer of a characteristic, quality, ingredient, or function of a
If a mark is merely descriptive or deceptively misdescriptive of the goods or services to which it
relates, the mark will be refused registration on the Principal Register under §2(e)(1) of the
Generic marks
A generic term is the common name for the products or services in connection with which it is used,
such as "salt" when used in connection with sodium chloride. A generic term is not capable of serving
the essential trademark function of distinguishing the products or services of a business from the
products or services of other businesses, and therefore cannot be afforded any legal protection. This
is because there has to be some term which may generally be used by anyone—including other
manufacturers—to refer to a product without using some organization's proprietary trademark. Marks
which become generic after losing distinctive character are known as genericized trademarks.
Generic terms are not protected as trademarks by the USPTO or the courts under any circumstances.
A generic term is the name of the product itself, and cannot function as a mark. For example, one
cannot claim the word BREAD as a mark for bread. Interestingly, a mark that was once fanciful,
arbitrary or suggestive might actually become generic if consumers come to consider the mark as the
name of the product (rather than as a distinctive identifier of source). Classic examples include the
terms aspirin, cellophane, thermos, and trampoline, which were all at one time trademarks and
became generic because consumers came to identify and use the marks as the name of the products
themselves. This phenomenon is often a function of the product's popularity in the marketplace, and
may occur regardless of how the trademark owner uses the mark. Sometimes it is the trademark
owner's own use of a mark as a generic term that results in loss of trademark rights. In order to
prevent their marks from becoming generic, we recommend that our clients follow sound Trademark
Usage Guidelines.
Thus, from a trademark perspective, the strongest marks are those that are fanciful or arbitrary, and
suggestive; the weakest are those that are merely descriptive. Generic terms cannot be trademarks.
From a business perspective, sometimes a fanciful or arbitrary mark may not be appropriate for a
particular product. Nevertheless, whenever possible, trademark owners should take care to choose a
strong mark that helps to position their products in the marketplace, and to avoid choosing one that is
considered merely descriptive or generic.
What is a generic mark?
There are several categories that are used in referring to a mark. One of these categories is known
as ―generic.‖ A mark that is generic cannot be protected as a trademark because it describes a whole
group of goods or services and cannot distinguish one product within the group from another,
providing any indication of source. Some marks were, at one time, protectable as trademarks but
have since become generic (this is known as ―genericide‖) and are no longer protectable. Famous
examples of such once- protected but now generic marks include ASPIRIN and ESCALATOR. The
GOOGLE mark is dangerously close to becoming generic, particularly as it has started to show up in
In addition to generic marks, the other relevant categories of marks are arbitrary or fanciful marks,
suggestive marks and descriptive marks.