US Trademark Guidelines
With regard to trademark significance, matter may be categorized along a continuum, ranging from marks that are highly distinctive to matter that is a generic name for the goods or services. The degree of distinctiveness – or, on the other hand, descriptiveness – of a designation can be determined only by considering it in relation to the specific goods or services. At one extreme are marks that, when used in relation to the goods or services, are completely arbitrary or fanciful. Next on the continuum are suggestive marks, followed by merely descriptive matter. Finally, generic terms for the goods or services are at the opposite end of the continuum from arbitrary or fanciful marks.
Fanciful, arbitrary, and suggestive marks, often referred to as “inherently distinctive” marks, are registrable on the Principal Register without proof of acquired distinctiveness. Placement on the Principal Register gives you a presumption throughout the United States that you are the owner of the mark, which makes it very difficult for anyone to challenge the mark in court. This is essentially the gold standard of trademark protection. And since the US is the largest economy in the world, businesses around the world search the Principal Register before selecting names and will generally stay away from anything with Principal Register protection. Examples include made-up words like Pepsi, Kodak and Exxon or words not commonly associated with the product or service, like Apple Computer, Nautilus Fitness or Old Crow Whiskey.
Marks that are merely descriptive of the goods or services generally cannot be registered on the Principal Register but may be registrable on the Supplemental Register. The Supplemental Register provides some protection but if the mark is challenged in court, you have to prove that in the area in which the suit is filed, people actually know of your company and your product or service and would associate your company with the product or service. Companies around the world will still search the Supplemental Register, though, and there’s a good chance they’ll stay away from anything that appears there, too – if only for concern about the lawsuits that might ensue if they come too close to a mark on the Supplemental Registry. But if a company has been using the mark (or a similar mark) for a while and it has achieved some regional or industry-specific significance, it might decide the risk is worth it. Examples of marks found merely descriptive and placed on the Supplemental Register include Dial-A-Mattress, Bed & Breakfast Registry and the use of the term “Apple Pie” to describe potpourri. Notably, though, marks placed on the Supplemental Registry can be moved up to the Principal Registry if they become sufficiently distinctive – Chipotle Mexican Grill is one example that started on the Supplemental and later ascended to the Principal.
Matter that is generic for the goods or services is not registrable on either the Principal or the Supplemental Register under any circumstance. Examples of names found by the US PTO to be too generic to list on either register include “Bundt” for a ring-cake mix, “Analog Devices” for devices having analog capabilities, and “Lawyers.com” for a website where you can find information about lawyers.