The strength of your trademark determines whether it can be registered, how easily it can be enforced, and how much protection it provides. The single most important distinction in trademark law is the line between descriptive and suggestive marks. That line decides whether your trademark is registrable on the Principal Register without proving acquired distinctiveness.
The Spectrum of Distinctiveness
Trademark law organizes all trademarks on a spectrum from weakest to strongest, known as the Abercrombie spectrum, named after the landmark case Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976).
| Category | Registrable? | Example |
|---|---|---|
| Generic | Never | COMPUTER for computers |
| Descriptive | Only with acquired distinctiveness (Section 2(f)) | COLD AND CREAMY for ice cream |
| Suggestive | Yes, no proof of distinctiveness needed | NETFLIX for streaming |
| Arbitrary | Yes, inherently distinctive | APPLE for computers |
| Fanciful | Yes, strongest protection | XEROX, KODAK |
The further down this table your trademark falls, the stronger your trademark protection. The critical threshold is between descriptive and suggestive: everything suggestive or stronger is inherently distinctive and registrable without additional proof. The glossary has short definitions of each term.
The Five Categories Explained
Generic: Never Registrable
A generic term is the common name for the product or service itself. No one can own "COFFEE" for coffee or "TAXI" for taxi services. Generic terms are in the public domain and can never function as trademarks.
Examples: ESCALATOR (originally a trademark, now generic), ASPIRIN (generic in the United States), THERMOS (generic through common use)
Descriptive: Registrable Only With Proof
A descriptive mark directly tells the consumer something about the goods or services: a quality, characteristic, function, feature, purpose, or use. Without proof that consumers have come to associate the term specifically with your brand (acquired distinctiveness), a descriptive mark cannot be registered on the Principal Register.
Examples:
- BEST BUY for retail electronics (descriptive, registered with 2(f))
- VISION CENTER for eye care clinics
- THE PROTEIN BAR for protein bars
Suggestive: Registrable Without Proof
A suggestive mark hints at or suggests a quality of the goods or services but requires the consumer to use imagination, thought, or perception to understand the connection. This "imagination test" is the key distinction.
Examples:
- COPPERTONE for sunscreen (suggests sun-tanned skin, does not describe the product)
- NETFLIX for streaming (suggests internet plus movies)
- JAGUAR for cars (suggests speed and power)
- GREYHOUND for bus service (suggests speed)
Arbitrary: Inherently Distinctive
An arbitrary mark uses an existing word in a context completely unrelated to its dictionary meaning. Because there is no logical connection between the word and the product, these trademarks are inherently strong.
Examples:
- APPLE for computers and electronics
- AMAZON for e-commerce
- SHELL for gasoline
- DOVE for soap
Fanciful: Strongest Protection
A fanciful mark is a completely invented word with no dictionary meaning. These are the strongest trademarks because they can only mean one thing: your brand.
Examples:
- XEROX for copiers
- KODAK for cameras
- HÄAGEN-DAZS for ice cream
- VERIZON for telecommunications
The Critical Line: Descriptive vs. Suggestive
The distinction between descriptive and suggestive marks is the most important and most litigated boundary in trademark law. Here is the test:
The Imagination Test
Ask yourself: Does the consumer need to exercise imagination, thought, or perception to connect the trademark to the goods or services?
- If YES: suggestive (registrable without proof of distinctiveness)
- If NO: descriptive (requires proof of acquired distinctiveness, or the Supplemental Register)
Pro Tip: The imagination test is inherently subjective, which is why the descriptive/suggestive line is the most frequently disputed issue in trademark examination. Reasonable minds can disagree, and examining attorneys often take a conservative position, calling trademarks descriptive that many practitioners would argue are suggestive.
Brand Examples Analyzed
The classifications below are our reading of how these trademarks would be argued, not settled rulings. Several of them (SHARP, MICROSOFT, CITIBANK) are exactly the kind of trademark where an examiner and an owner could reasonably land on different sides of the line.
| Trademark | Goods/Services | Our reading | Why |
|---|---|---|---|
| SHARP | TVs/electronics | Suggestive | A "sharp" image requires imagination to connect |
| BEST BUY | Electronics retail | Descriptive | Directly describes the value proposition |
| COPPERTONE | Sunscreen | Suggestive | Evokes tanned skin indirectly |
| INTERNATIONAL BUSINESS MACHINES | Computers | Descriptive | Directly describes the business |
| CITIBANK | Banking | Suggestive or arbitrary | "Citi" is a playful spelling suggesting city banking |
| VISION CENTER | Eye care | Descriptive | Directly describes the service |
| MICROSOFT | Software | Suggestive | Micro plus soft(ware) suggests but does not directly describe |
| THE PROTEIN BAR | Protein bars | Descriptive | Names the product exactly |
| SWEETARTS | Candy | Suggestive | Sweet plus tart flavor requires thought |
| PARK 'N FLY | Airport parking | Suggestive | Suggests the concept without directly describing |
What to Do If Your Trademark Is Descriptive
If the USPTO issues a Section 2(e)(1) refusal for mere descriptiveness, you have several options. The cost of a response depends on which route you take; our United States office action service quotes a flat professional fee once we have read the refusal.
1. Argue It Is Suggestive
Present the imagination test argument with supporting evidence. Show that the trademark does not immediately convey information about the goods; the consumer must think to make the connection.
2. Submit Section 2(f) Evidence (Acquired Distinctiveness)
If you have been using the trademark for years and it has become associated with your brand in consumers' minds, you can submit evidence of acquired distinctiveness:
- 5+ years of substantially exclusive and continuous use
- Sales figures and advertising expenditures
- Consumer surveys or declarations
- Media coverage and third-party recognition
3. Amend to the Supplemental Register
The Supplemental Register provides limited protection for descriptive marks. You can use the ® symbol and block others from registering similar trademarks, while building the use history needed for a future Principal Register application.
4. Choose a Stronger Trademark
If you are early in your brand development, consider rebranding to a suggestive, arbitrary, or fanciful mark. The short-term marketing investment pays long-term dividends in trademark strength and enforceability.
Choosing a Strong Trademark From the Start
When developing a new brand name, aim for the strong end of the spectrum:
- Fanciful marks require more marketing to build recognition, but they provide the strongest protection
- Arbitrary marks are a sweet spot: recognizable words that are distinctive in your context
- Suggestive marks balance marketing efficiency with legal strength
- Descriptive marks are easy to market but hard to protect
Not sure where your trademark falls? Check your trademark. Our experienced attorneys evaluate trademark strength as part of every United States trademark filing, and the USPTO base application is $350 per class.
