Fanciful or arbitrary marks are invented words (KODAK) or common words with no particular connection to the product or service or no connection to a feature or function of the product or service (APPLE). These are the strongest types of trademarks because they are the most distinctive and as such, the most protectable.

Suggestive trademarks are those that may not immediately describe the goods or services, but they suggest the goods or services. Suggestive marks require some degree of imagination to understand the nature of the goods or services. For example with the PETSMART trademark, PETS suggests products related to pet care and MART suggests a store of some kind. Suggestive marks are less distinctive and protectable than fanciful/arbitrary marks. Although they are not as strong as fanciful/arbitrary marks, they are sometimes preferred from a marketing standpoint because they give customers a hint as to the nature of the goods or services.

Descriptive marks, as the name suggests, describe a product or service (or describe characteristics or features of a product or service). Because descriptive words need to be available to all sellers in a market (for use in describing their goods or services), they are not protectable as trademarks until they have been so widely used and marketed over a long period of time that the buying public comes to associate the descriptive trademark with a particular company or source. Because extensive use is required in order for a descriptive mark to be protectable and registerable, you should prepare to spend a significant amount of time and money promoting such a mark.

At the far end of the spectrum are generic terms. These aren’t trademarks at all. They are simply the commonly used names for particular products or services. For example, “tissue” is a generic name and KLEENEX is a brand name or trademark. Generic terms are never protectable as trademarks because they must be available for everyone to use.

2. Availability

Once you have chosen a strong, protectable trademark, a search must be conducted to make sure that there are no other companies or individuals already using the mark for the same or similar goods or services. The simplest and least extensive search is called a “Knockout Search.” In a Knockout Search we check the US Patent and Trademark Office and state trademark offices’ databases for applications or registrations for trademarks that are identical to your mark. This is NOT an extensive search, but is used mainly to let you know if there are obvious problems with the trademark you have chosen.

A “Screening Search” is slightly more thorough in that we check for marks that are either identical or similar to your mark. Because a trademark application can be rejected if there are other marks that are similar, even if not identical to your mark, it is important to search for other marks that might look our sound close to your mark.

As mentioned above, here in the US, trademark rights are acquired through use of a trademark (“Common Law” rights). For this reason, it is also very important to make sure that there are not other individuals or companies using a mark (even without an application or registration) that is similar or identical to yours. Our most extensive search, a “Comprehensive Federal, State and Common Law” covers the broadest range of trademarks. In addition to casting a wider net for applications and registrations for similar marks, this search covers common law trademarks by reviewing databases that include company names, product names and service names for which a trademark registration may never have been sought.