When it comes to registering words as a trademark, it is important to pick the right words. Word marks are normally classified in categories of generally increasing distinctiveness; they may be (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful.” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992). Marks that are suggestive, arbitrary; or fanciful are deemed inherently distinctive and are entitled to automatic trademark protection. Id.; Xtreme Lashes, LLC v. Xtended Beauty, Inc., 576 F.3d 221, 227 (5th Cir. 2009). Texas and Federal trademarks both follow this rule.
A descriptive mark, on the other hand, denotes “a characteristic or quality of an article or service, such as its
Patent and IP litigation
color, odor, function, dimensions, or ingredients.” Test Masters Educ. Serv. v. Singh, 2002 WL 1940083, at *2 (5th Cir. 2002). Descriptive marks are ordinary words that describes the characteristics of a product or service and does not effectively distinguish it from similar products or services offered by others. Descriptive marks cannot be protected unless they acquire distinctiveness through secondary meaning. Id.
To show that a mark is eligible for protection, a trademark owner must demonstrate its “classification,” i.e., that it is a suggestive term, an arbitrary or fanciful term, or a descriptive term that has acquired a secondary meaning. 48 Union Nat’l Bank of Tex., 909 F.2d at 844. The best trademarks have both no meaning and an obvious meaning (e.g. Xerox®, Fedex®, Google® ). Good trademarks are usually made up words that are seem obvious when you are familiar with the product and service and are confusing to those who are not familiar with the products or service associated with the trademark. You can not pass on misspellings of read words as made up mark for trademarks registration purpose. The trademark examiner are on the look out for misspellings of real words.
