The scope of protection is not limitless, however. The USPTO will not register scandalous marks, certain insignia, geographically deceptive mis-descriptive marks and special words protected by statute, such as “Olympic.”
Certain marks are more difficult to register. These marks include surnames, colors, geographic names and product configurations. Applicants will generally have to make a showing of acquired distinctiveness by providing evidence, such as advertising budgets, sales figures, unsolicited publicity and evidence, that the mark has been used for a period of time longer than five years.
Note that the mere fact that a mark is difficult to register does not necessarily mean that it will be difficult to enforce the mark in court.
The five different types of word marks are fanciful, arbitrary, suggestive, descriptive and generic. Fanciful marks are completely “made-up” words such as Kodak, Zazu and Kotex.
Arbitrary words are words that have no prior association with the goods or services with which they are being used. Examples of arbitrary marks include Dr. Pepper used with soda, Apple used with computers and Wild Turkey and Old Granddad with liquor.
Suggestive marks are words that suggest some desirable quality of the goods or services with which the marks are being used. Such marks include Nike with shoes, Coppertone with suntan lotion and Depends with diapers.
Descriptive marks are such marks as CheezIts for cheese-flavored crackers, Rice Krispies for crispy rice cereal and Chap Stick for lip balm.
Generic marks include oat bran, milk, bread and diapers.
Arbitrary, fanciful and suggestive marks are the most desirable because they can be protected without showing that the marks have acquired distinctiveness. However, there can be a fine line between a suggestive or descriptive mark.
Descriptive marks are less desirable because they can only be protected with a showing of acquired distinctiveness. Generic marks cannot be protected at all.
Sometimes a mark can lose its status and become generic through improper use. As a result, a formerly fanciful mark can become generic. Many valuable marks have lost their status in this way, such as kleenex or aspirin.