A trademark is a source indicator of goods or services. As such, you want your mark to stand out and be remembered. There are types or categories of marks that provide a great level of protection than others. The types are: arbitrary, fanciful, suggestive, descriptive and generic.
Arbitrary marks provide the greatest scope of protection and strength. These are marks that consist of made-up words created specifically for use as a trademark. These include Kodak and Exxon. Fanciful marks are actual words that are used in connection with a completely unassociated product or service. A good example of a fanciful mark is “Apple” for computers. Suggestive marks are words that have been selected because they are suggestive of a particular attribute or feature of the product or service. Suggestive marks would include “Jaguar” automobile, or “Greyhound” bus service. Arbitrary, fanciful and suggestive marks are essentially acceptable for use as a trademark or service mark barring any third party uses.
Descriptive marks are more difficult to protect, because they primarily describe the product or service. The US Trademark Office will reject an application for a trademark that is “merely descriptive” of its goods or services. However, a mark is entitled to trademark registration as a descriptive mark if it is not merely or solely describing the goods or services. This requires proof of distinctiveness or “secondary meaning”. “Best Buy” for retail stores selling electronics and appliances is an example of a descriptive mark. Finally, generic marks are marks that become what we use as a noun for a product or service. Examples of trademarks that have become generic include escalator and linoleum. Trademark owners need to walk a fine line between obtaining the status of a well-known mark and having that mark become generic.
Once you’ve selected your mark, you should conduct a search to determine whether your mark is available for use and registration. A trademark attorney can assist you with this process. If the mark is available for use, determine whether or not you need to register your mark with the United States Patent and Trademark Office. Federal trademark registration requires a showing that you have sold your goods or services using your mark across state lines.
Filing for federal trademark protection can be done prior to an actual sale of your goods or services across state lines. If you have already begun using your mark with your goods or services across state lines, you can file your application along with proof of use of the mark.
After your mark is filed, it will be reviewed substantively by an examining attorney. If your mark is allowed, it will be published for opposition. This allows anyone who believes they may be harmed by your registration to file an opposition. An opposition proceeding is a quasi-judicial proceeding the takes place in the US Patent and Trademark Office. It is similar to litigation in that there are documents exchanged and depositions may be taken. During an opposition proceeding, the opposing party must show how they will be harmed by registration of your mark.