Some names don’t receive any trade­mark pro­tec­tion and some are stronger than oth­ers. Let’s run through an exam­ple to see how this works. Imag­ine you want to sell piz­zas and need to come up with a good name. You can call your pizza: Pizza, Best Pizza, Alaska’s Best Pizza, Suzy’s Pizza, A.J.’s Pizza, Mile Pie Pizza, Piz­zatas­tic, Taran­tula Pizza, Falling Domino Pizza, or Praz­da­hada Pizza. Let’s take a look at these in order:

  • Pizza. This is generic. You can use this name, but any­body else can also use the name and you wont be able to reg­is­ter the name with the USPTO.
  • Best Pizza, Alaska’s Best Pizza, Suzy’s Pizza, A.J.’s Pizza. These are all descrip­tive names. They merely describe the pizza’s qual­ity, geog­ra­phy, or use a per­sonal name or acronym. You most likely will not be able to reg­is­ter any of these names with the USPTO unless you can prove that you’ve used the name long enough to gain mean­ing beyond the descrip­tive name. (McDonald’s is a good exam­ple.) You might be able to reg­is­ter the name with the state of Alaska. You might also be able to stop some­one else from using the name through unfair trade prac­tices laws.
  • Mile Pie Pizza, Piz­zatas­tic. These two names are stronger than descrip­tive names. They are sug­ges­tive marks. They use ordi­nary words in a clever way to cre­ate a desir­able feel­ing about the prod­uct. They are con­sid­ered dis­tinc­tive and there­fore pro­tectable. You prob­a­bly can reg­is­ter these names with the USPTO so long as the name doesn’t cause con­fu­sion with another pro­tected trade­mark. But remem­ber, there is no guar­an­tee that the name will be approved.
  • Taran­tula Pizza, Falling Domino Pizza. These names are arbi­trary. You nor­mally don’t asso­ciate taran­tu­las or domi­nos along with pizza. These names use com­mon words used in an unex­pected or arbi­trary way and are legally strong marks. The USPTO will likely accept the appli­ca­tion so long as they don’t cause con­fu­sion with another pro­tected trade­mark. The appli­cant will still need to dis­claim rights to the word Pizza in the trade­mark appli­ca­tion. The name Falling Domino Pizza, how­ever, is likely too close to the Domino’s Pizza trade­mark and will almost cer­tainly be rejected because it can be eas­ily con­fused with a pro­tected reg­is­tered trademark.
  • Praz­da­hada Pizza. I made this name up. Pretty good huh? It’s a coined trade­mark. If this is a brand new word never used before and isn’t close to any other name in its class, then the USPTO will almost cer­tainly approve the trade­mark application.

So let’s review the dif­fer­ent lev­els of trade­mark strength from the weak­est to the strongest.


These words are syn­ony­mous with the under­ly­ing prod­uct or ser­vice and can’t be dis­tin­guished from oth­ers. Names like cola, dry ice, pizza, etc. These names will never receive any protection.


These are ordi­nary marks. The mark says some­thing about the prod­uct or ser­vice in a descrip­tive or oth­er­wise mun­dane way. These names only receive pro­tec­tion when they become so closely iden­ti­fied with a spe­cific prod­uct or ser­vice that the pub­lic no longer thinks first of the orig­i­nal ordi­nary mean­ing of the word (think McDonald’s). They also get pro­tec­tion from unfair trade prac­tices laws. Nondis­tinc­tive marks include:

  • Descrip­tions. These marks describe a fea­ture or attribute of the prod­uct or ser­vices such as Best Pet Care, Superb Web Design, etc. It also includes com­pos­ite words that use frag­ments such as web-, micro-, compu-, etc.
  • Geo­graphic names. These marks include geo­graphic terms like West, Anchor­age, Alaska, Denali, world, global or any other place iden­ti­fier such as street names, regions, rivers, etc.
  • Per­sonal names. These include first name, nick­names, sur­names, and ini­tials. They’re the most pop­u­lar marks used for goods and services.

Even though non-distinctive marks don’t qual­ify for fed­eral reg­is­tra­tion, they can be placed on the fed­eral sup­ple­men­tal reg­is­ter. The ben­e­fits of doing this are: it gives notice to future trade­mark searchers; you’re allowed to use the ® with the mark; and if the mark remains on the sup­ple­men­tal reg­is­ter for five years it makes it more likely to be placed on the prin­ci­pal reg­is­ter. (All ref­er­ences to fed­eral reg­is­ter in this book refer to the prin­ci­pal reg­is­ter unless oth­er­wise specified.)


If you use an ordi­nary word to sug­gest, but not out­right describe an idea or feel­ing, the mark is con­sid­ered dis­tinc­tive and pro­tectable. A good exam­ple is Roach Motel.


If you use ordi­nary words in an unusual con­text or cre­ate a fan­ci­ful asso­ci­a­tion, then the mark is con­sid­ered dis­tinc­tive and pro­tectable. A good exam­ple is Apple Com­puter. You won’t find any apples in their prod­ucts. What does an apple have to do with com­put­ers? The asso­ci­a­tion is fanciful.


These words are made up and mean noth­ing. They more than likely never existed before. The best exam­ple is Kodak. These names receive the most protection.