5 Types of Word Marks Classification you should Know

Starting out a business, you want to use a name that represents your brand well and that makes you distinct. However, when doing this, you need to understand that not all names can have the same level of trademark protection. In fact, your application for trademark protection may be refused in some cases.

The reason for this is because the legal strength of a trademark determines the level of protection it would carry. Before I go into explaining the different levels of legal strength that a trademark can carry, you should understand that registering your trademark through the United States Patent and Trademark Office (USPTO) means that you have exclusive rights to the usage of the name for the classes of goods or services that you register under.

The types of Trademark Registers

The legal strength determines whether your name can be registered on USPTO’s Principal Register or even the Supplemental Register. The Principal register is what most businesses want to be on. This is because it acknowledges that you have exclusive rights to the usage of the name in all 50 states. Names that are not descriptive would most likely end up on this register.

Having your name end up on the Supplemental Register is not a bad thing, but it shows that you’re not fully recognized as the exclusive owner of the name from the trademark perspective.

So, if you’re in a lawsuit over the infringement of your brand name, you would need to prove that you’re the recognized name in the industry. Having your business name in the Principal Register means that you’re the presumed owner of the name. This puts you in a good position if a lawsuit comes up in the future over your exclusive rights to the name.

Word Marks Classification

Now let’s see the classification of word marks and how they determine where your business names, slogans and taglines would be registered (or even if they’d be registered at all). Here’s the classification in order of their protection. We’ll start from the most protected and then straight down to the least.

The Fanciful Marks

These are also called coined trademarks. These trademarks are made up and have no association whatsoever to the product line of the business. Once a name is registered under this category, it would have a high level of protection.

This prevents your name from being used by infringers that are trying to profit from your mark, and in case someone infringes on your trademark, they already find themselves at the risk of losing the lawsuit in court. This is because infringers have a hard time giving a plausible explanation for their use of your name.

Exxon, Linux, Kodak, Cisco, Unilever, FUBU etc. are examples of names that fall under this category. Good luck explaining to the court how you came up with those names in case you’re caught infringing on their mark.

Arbitrary Marks

Arbitrary marks are trademarks having a common name with a common meaning, but whose meanings are completely unrelated to the services they offer.

Examples include Shell (oil company), Apple (computer manufacturer), Amazon (electronic commerce and cloud computing company), Puma (footwear manufacturer), Dove (personal care brand), etc.

Suggestive Marks

These trademarks are marks having a name or term that does not specifically describe the product line of a company, but rather requires the imagination, thought or perception of the consumer to reach a conclusion on the nature of their products.

Examples include Coppertone (brand name for an American sunscreen), and Chicken of the Sea (popular brand of tuna). There are no words that say sunscreen or tuna in the names of those brands.

Descriptive Marks

These trademarks immediately describe the product line of the company without requiring much thought. These means that customers would not have a hard time associating these words with the product offering of the brand. These marks contain words that describe the features and quality the products and services of a company.

Best Buy, Air France and Sharp are examples of trademarks that fall under this category.

Generic Terms

Generic terms are symbols or words that are used to identify specific products and services. Due to the nature of these words, application for trademark protection of generic terms is impossible, and so they are not registrable under the Principal or Supplementary Register. Therefore, you can’t brand your company name as “Cupcakes” or “Cars.”