During a recent discussion with a non-lawyer about trademarks, I explained the so-called “spectrum of trademark distinctiveness” and used APPLE as an example of an arbitrary mark. The person responded, “Wait, you can trademark that?”. The question caught me off guard since I assumed everyone knew that APPLE was arguably the most valuable trademark in the world. Well, to paraphrase Ted Lasso, you know what they say when you assume? You make an “arse” out of you and me.

So let’s go back to the basics. When creating a trademark for your brand, product, or service, it’s important to understand that not all trademarks are created equal. In the eyes of the law, some are stronger, more easily protectable than others. The strength of a trademark is largely determined by its distinctiveness.

Distinctiveness, in this context, refers to the relationship between the mark and the underlying product or service. A mark is more distinctive if it seems unrelated or “distinct” from the product or service it identifies.

To help better understand this, we imagine distinctiveness as a spectrum. On one end, we have the most distinctive (and hence the most protectable) trademarks; on the other, the least distinctive. Let’s walk through these categories, from most to least distinctive.

  1. Coined (or Fanciful) Trademarks: These words have no meaning before they become associated with the product or service. They’re made-up words invented for the sole purpose of functioning as a trademark and are highly distinctive. For example, KODAK (cameras), EXXON (oil and gas), and HÄAGEN-DAZS (ice cream). These marks offer the highest level of protection because they are inherently distinctive.
  2. Arbitrary Trademarks: These are common words that exist in the language but have no logical or describing relation to the goods or services they represent—for example, CAMEL (for cigarettes) and AMAZON (for e-commerce). Like coined trademarks, arbitrary marks are also highly protectable due to their inherent distinctiveness.
  3. Suggestive Trademarks: These trademarks hint at or suggest the nature, quality, or a characteristic of the products or services but don’t describe them outright. The connection is more indirect, requiring consumers to use some imagination. Examples include NETFLIX (Internet streaming services), MICROSOFT (for software—micro for microcomputer and soft for software), and COPPERTONE (for suntan lotion). Suggestive trademarks are also highly protectable.
  4. Descriptive Trademarks: These are words or designs that describe the goods and services, its purpose, or its ingredients. For example, SPORTS ILLUSTRATED (for a sports magazine), BEST BUY (for retail store services), and INTERNATIONAL BUSINESS MACHINES (IBM, for computers). Descriptive trademarks are not inherently distinctive and are protectable only if they have acquired “secondary meaning,” meaning they have become distinctive of the applicant’s goods and services in commerce.
  5. Generic Terms: These describe an entire category of products, not distinguishing the source of the goods or services. Examples include “Bicycle” for bicycles, “Milk” for a dairy-based drink, or “Computer” for computers. Generic terms can never be protected as trademarks because they are not distinctive.

Circling back to the word “Apple”, it’s a generic term for a type of fruit, of course, but it has no inherent or direct connection to computers, smartphones, or software. Therefore, it is considered arbitrary in this context.

Because of this arbitrariness, the term “Apple” in relation to technology products and services is distinctive. This allows the brand to be immediately identifiable. So when people hear “Apple” in the context of computers or smartphones, they don’t think of the fruit, but instead, they think of the company that produces popular products like the iPhone, iPad, and MacBook.

Remember, when you’re creating a trademark, it’s not just about coming up with a catchy, memorable name. It’s also about considering how easily it can be protected. Don’t set yourself up for a challenge later—take the time to create a coined, arbitrary, or suggestive mark from the start.