Choosing a strong mark

A trademark is a word, name, symbol or design, or a combination of them, used to identify your goods and distinguish them from everyone else's (15 U.S.C. §1127). A mark used for services is a service mark. The same rules apply. Whether your choice can work as a mark depends mostly on one question: does it name or describe what you sell, or does it point to you?

The distinctiveness spectrum

US law sorts word marks into five categories, from weakest to strongest. The Supreme Court summarized them in USPTO v. Booking.com B.V., 591 U.S. 549, 553 (2020): generic, descriptive, suggestive, arbitrary and fanciful. The USPTO's examination manual calls this the distinctiveness continuum (TMEP §1209.01).

1. Generic. The common name of the product, such as "Coffee" for a café. A generic term can never be registered, however long it has been used, because it cannot tell buyers who the source is.
2. Descriptive. It immediately tells buyers a quality, feature, purpose or characteristic, such as "Creamy" for yogurt. The Lanham Act refuses marks that are "merely descriptive" (§2(e)(1), 15 U.S.C. §1052(e)(1)). A descriptive mark can still be registered once buyers have come to see it as yours. This is called acquired distinctiveness, or secondary meaning, under §2(f). The USPTO may accept five years of substantially exclusive and continuous use as prima facie evidence of it. Until then, a descriptive mark may go on the Supplemental Register, which gives fewer rights.
3. Suggestive. It hints at a quality but needs a step of imagination to connect it to the product. The Federal Circuit put the test this way: "If the mental leap between the word and the product's attributes is not almost instantaneous," the term is suggestive, not descriptive (In re Bayou Grande Coffee Roasting Co., slip op. at 8 (Fed. Cir. 2025), quoting McCarthy). Suggestive marks are registrable without proof of use over time.
4. Arbitrary. A real word with no connection to the product, such as CAMEL for cigarettes or APPLE for computers.
5. Fanciful. An invented word, such as KODAK for film.

Suggestive, arbitrary and fanciful marks are inherently distinctive. They can be registered on the Principal Register without evidence that buyers already know them.

Why the stronger end is worth it

A descriptive mark is cheap to explain to customers. It is also the most likely to be refused, the hardest to enforce against competitors who use the same words, and the slowest to become an asset. Courts give weak marks narrow protection. Studies of infringement cases show that a mark's real-world reputation tends to decide its strength (see our commentary on what the research says). A distinctive choice gives you that strength from the start instead of making you earn it.

Other refusals to check for

• Surnames. A mark that is "primarily merely a surname" is refused under §2(e)(4) until it acquires distinctiveness.
• Places. A mark that is primarily geographically descriptive of where the goods come from is refused under §2(e)(2).
• Failure to function. A common phrase or message that many sellers already use on the same goods may not be seen as a brand at all, however you display it (TMEP §1202.04). Slogans and popular expressions are where this refusal appears most often.
• Foreign words. The USPTO usually translates words from common languages into English before testing them. A foreign word that means "coffee" is treated like "coffee." Every application must give an English translation of non-English wording (37 C.F.R. §2.32(a)(9)).
• Conflicts. A mark likely to be confused with someone else's registered or pending mark for related goods is refused under §2(d). That is a search question. See searching before you file.

A simple test you can run

For each candidate, write down your goods or services in plain words. Then ask:

• Would a competitor need this word to describe their own product? If yes, it is probably descriptive or generic.
• Does a buyer need imagination to connect the word to the product? If yes, it is probably suggestive or stronger.
• Do other sellers already put this word or phrase on similar goods? Look at online marketplaces. If many do, buyers may not see it as a brand.
• What does it mean in Spanish, French, Chinese, German and the other common languages of your market?

None of this tells you whether a particular mark will register. It helps you discard weak candidates before you pay for a search or a filing.

When an attorney earns their fee

Most owners can sort obvious cases themselves. A trademark attorney is worth paying when a candidate sits on the line between descriptive and suggestive, which is where most refusals and disputes happen. The same applies when you plan to sell in several countries and need one mark that works in all of them. If your business is domiciled outside the United States, you will need a US-licensed attorney to file anyway (37 C.F.R. §2.11(a)).

This guide is general information, not legal advice about your mark. For how these rules play out in recent cases, see our commentary on failure to function after Brunetti and on foreign words in US marks.