To function as a trademark, a mark (name, word, phrase, logo symbol, design, image, or combination of these elements) must be sufficiently distinctive to distinguish the source of the associated goods. Marks are generally divided into five classifications based upon distinctiveness. The strength and registerability of a mark is determined by these classifications. The five classifications, in order of most distinctive to least distinctive, are:

1. FANCIFUL.

2. ARBITRARY,

3. SUGGESTIVE,

4. DESCRIPTIVE, and

5. GENERIC

Fanciful, arbitrary and suggestive marks are inherently distinctive (capable of identifying the source of associated goods and services). These marks are generally registerable without any distinctiveness-based objection and are afforded a high degree of protection. Descriptive marks are not inherently distinctive and must acquire secondary meaning (as an identifier of the source of the associated goods and services) to be protected. Generic terms lack sufficient distinctiveness to function as trademarks and may never be registered.

Fanciful marks are the strongest marks. Descriptive marks are the weakest registerable marks. Generic terms are not protected at all.

FANCIFUL: Fanciful marks are entirely made up words with no dictionary meaning. KLEENEX is an example of a fanciful mark.

ARBITRARY: Arbitrary marks are common words used in a context that has no meaning with respect to the associated goods or services. APPLE, as used in connection with computers, is an example of an arbitrary mark. 

SUGGESTIVE: These marks generally suggest some quality or characteristic of the associated products or services. These marks require mental gymnastics to associate the word with the products or services. IVORY, as used in connection with soap, is an example of a suggestive mark. 

DESCRIPTIVE: These marks describe the associated goods or services. Clients often favor these marks because the consumer will automatically know what the associated goods or services are, without the use of any imagination, and without the necessity of large marketing and advertising investments to create the association of the mark to the associated goods and services.  However, descriptive marks are not automatically entitled to registration (on the Principal Register).  It must be shown that the descriptive term has acquired a secondary meaning in the relevant market – that secondary meaning being the source of the associated goods and services.  This secondary meaning may be shown by evidence including industry literature, extent of advertising, consumer surveys and amount of sales.  In addition, once a mark has been in use in commerce for five years, it is presumed to have acquired that secondary meaning.  

Until the mark has acquired secondary meaning, the mark may be registered on the Supplemental Register.  While not offering all of the advantages of the Principal Register, registration on the Supplemental Register does provide the following benefits:

• Allows an infringement action to be brought in federal court.

• The mark is on file with the USPTO, and can be cited by the USPTO against a later application by a third party to register a substantially similar mark. 

• The registrant can subsequently apply to have the mark registered on the Principal Register upon acquiring secondary meaning. 

• The symbol ® may be used to provide notice that the mark has been registered (on the Supplemental Register) with the USPTO.

Later, after either demonstrating acquired secondary meaning or after five years of use in commerce, the mark may be registered on the Principal Register.  HOLIDAY INN is an example of a mark that is merely descriptive, but has acquired secondary meaning as a particular source of the underlying service.

GENERIC: Generic terms describe the associated goods and services by their common names. Generic terms are never registerable because registration would provide an unfair advantage - essentially prohibiting others from competing in the market. For example, if a party were allowed to register the term SODA in connection with a carbonated beverage, then no one else could use the word "soda" to describe their competing carbonated beverage. 

Note, however, that adding an adjective to a generic term can result in a registerable mark. For example, WINDY CITY SODA is the registered trademark of a producer of carbonated beverages. In addition, the same term, soda, has been registered in association with such diverse goods and services as office furniture, handbags, computer software and air shipping services - none of which is described in any meaningful way by the term "soda." 

A once-distinctive trademark can become generic when, in the minds of a substantial majority of the public, the mark denotes a type of product rather than a specific source of the product. ASPIRIN, which was originally a brand name, lost its capacity to function as a trademark when its common usage became a reference to a product containing the active chemical ingredient of aspirin rather than identification of the source of a good.