Understanding Fanciful Trademarks and Their Strategic Value

Key Takeaways

• Fanciful trademarks are invented words with no prior meaning, offering the strongest legal protection.
• They are distinct from arbitrary, suggestive, descriptive, and generic trademarks based on their inherent uniqueness.
• Choosing a fanciful trademark supports brand differentiation but requires significant marketing to build consumer recognition.
• A fanciful mark can become generic over time if not properly enforced.
• Trademark registration, use in commerce, and consistent brand policing are critical to maintaining a fanciful mark’s strength.
• Legal help is essential for clearance, registration, and enforcement of fanciful marks.

What Are Fanciful Trademarks?

Fanciful trademarks are made-up terms invented for the single purpose of functioning as a trademark. They can be either neologisms (words that don't mean anything in the English language) or archaic words that are out of common usage.

A fanciful trademark is distinctive and only has a meaning when used in relation to a specific product. For this reason, fanciful marks are the strongest type of trademarks.

Famous examples of fanciful trademarks include Exxon, Kodak, Pepsi, Clorox, and Xerox.

Why Fanciful Trademarks Offer the Highest Distinctiveness

Fanciful trademarks are considered inherently distinctive because they are coined specifically to function as trademarks. Unlike arbitrary marks, which use existing words in unrelated contexts, fanciful marks have no prior meaning and therefore immediately identify the source of a product or service without ambiguity.

This level of distinctiveness provides several advantages:

• Immediate eligibility for federal registration without the need to prove secondary meaning.
• Greater legal protection against infringement or dilution claims.
• Ease of international trademark protection due to their unique and non-descriptive nature.

For example, "Kodak" had no prior definition and thus was able to gain strong trademark protection almost immediately after being introduced.

Understanding the Strength of Trademarks

A term is considered a trademark and receives protection only when it's distinctive. The public needs to able to distinguish the mark associated with your product from the goods of your competitors. The more distinctive a trademark is, the stronger it is.A mark can fall into five categories, from the most distinctive (and strongest) to the least distinctive:

• Fanciful marks
• Arbitrary marks

Arbitrary marks are real words with a meaning that isn't associated with the product sold. An example is the Apple trademark. An apple is a type of fruit, and it couldn't be used as a trademark in the agricultural sector. However, it can be registered as a trademark in association with the computer sector.

• Suggestive marks

A suggestive mark is an allusive word that suggests a characteristic of the product or service that is sold. However, suggestive marks are different from descriptive ones because the consumer has to use a little imagination to understand what the product is. Examples of suggestive marks include Microsoft (software for microcomputers), Citibank (financial services), and Jaguar (cars).

• Descriptive marks

Descriptive marks are words that merely describe the product they are associated with. Since a customer can't identify the specific product with such a mark, descriptive marks aren't considered trademarks. They can't receive any protection unless they acquire secondary meaning, which usually takes a long time, if it happens at all. Examples of descriptive marks are "104 Key" (computer keyboards have 104 keys) and "deep bowl."

United States trademark law treats surnames exactly as if they were descriptive marks. A trademark is considered "primarily a surname" if the public doesn't immediately identify it with a product or service. Surnames as marks aren't granted protection unless they've acquired a secondary meaning over time. In this case, the trademark is protected and no one can use it for another product. An example is the surname "McDonald." A man named Bob MacDonald couldn't open a restaurant and call it "McDonald's," no matter if that's his surname, because "McDonald's" has acquired a secondary meaning and is thus a protected trademark.

• Generic marks

Generic marks are words that define a product, for example, "smartphone," "email," or "bread." Generic words cannot be trademarks. The federal government​ has in fact determined that no one can have exclusive rights to a word of common use.

The Spectrum of Distinctiveness and Legal Implications

The strength of a trademark directly correlates with its distinctiveness. The USPTO and courts use a classification known as the spectrum of distinctiveness to determine protectability:

• Fanciful – Invented terms (e.g., Clorox, Verizon)
• Arbitrary – Real words unrelated to the product (e.g., Apple for computers)
• Suggestive – Requires imagination (e.g., Netflix)
• Descriptive – Directly describes the product (e.g., Cold and Creamy Ice Cream)
• Generic – Common product names (e.g., "milk")

Only marks in the fanciful, arbitrary, and suggestive categories are immediately eligible for protection. Descriptive marks must acquire distinctiveness, while generic terms can never be registered.

When Fanciful Trademarks Become Generic

Fanciful trademarks are the strongest marks, but sometimes after many years, they can become generic marks. This is known as " genericity": a word that was once a unique trademark has become so common that people use it for generic items that are not the original product.

"Aspirin," "Linoleum," and "Elevator" are examples of genericity. The trademark "Google" might also become generic soon, as people use the verb "to google" when talking about searching the web, no matter which search engine they use.

How to Prevent Genericide of a Fanciful Trademark

Even the strongest fanciful trademarks can lose protection through genericide—when the public uses a trademarked name as a general term. This risk is especially high for widely popular or innovative products.

To safeguard a fanciful trademark from becoming generic:

• Use the trademark as an adjective, not a noun (e.g., “a Xerox copier” not “a Xerox”).
• Educate consumers and the media on proper usage.
• Enforce misuse through cease and desist letters and media corrections.
• Avoid licensing the mark without clear brand guidelines.

Brands like Velcro and Google have actively fought against the generic use of their trademarks through advertising and public statements.

How to Choose the Right Trademark

Your trademark could become your most treasured asset. Choosing the right trademark is essential since your choice will have important consequences for your business.

Consider looking for a good trademark attorney that can help you choose the perfect trademark. A trademark lawyer will make sure your trademark is protected under the common law trademark rights. He/she will also decide if you should register your trademark in the Patent and Trademark Office.

Here are a few general tips on how to choose a good trademark:

• Choose a mark that is as distinctive as possible, such as fanciful or arbitrary trademarks
• Avoid any marks that are similar to another mark in your same class of product or service
• Don't go for generic or merely descriptive terms, because they can't be registered as trademarks. Keep in mind that with generic marks, it doesn't matter if the term is an existing or a made-up word. For example, Apple was able to register its mark related to computers even though "apple" is a real word, but made-up words that are closely related to a family of products cannot be registered (such as "boygear").
• Avoid suggestive trademarks that could easily be mistaken for merely descriptive trademarks that are not registrable
• Don't choose any mark which contains obscenities, which you can't register

Tips for Creating a Good Fanciful Trademark

Creating the perfect fanciful trademark means finding the "feeling" that you want your brand to bring to consumers. George Eastman, who created the Kodak trademark, said that a good trademark should be meaningless, short, easily spelled, and vigorous.

If you prefer using an archaic word, look through an archaic word dictionary until you find the right word. If you want to make up a new word, have fun combining letters that sound well together. Pharmaceutical companies often use the letters V, X, and Z. Here are some other things you can do to come up with the right word:

• List all the adjectives that you want your customers to relate to your product and brand
• Look at your competitors' trademarks. What are common sounds used in your sector? What terms do people search for online when looking for your competitors' products?
• Answer these questions: What is the feeling that you want your product to convey? Is your brand young and fun? Is it formal? Think of your business as a real person. This will help you come up with the right sound.

Common Pitfalls to Avoid When Creating Fanciful Marks

While creative freedom is encouraged in crafting fanciful marks, missteps can weaken legal protection or confuse customers. Avoid these common errors:

• Using obscure foreign words that may have unintended meanings in key markets.
• Creating overly complex or hard-to-pronounce names, which hinder memorability and spelling.
• Inadvertently resembling existing marks, which could lead to rejection or litigation.
• Failing to check domain name availability, impacting online branding.
• Not conducting a clearance search, risking infringement issues later.

Always vet potential fanciful names through a qualified trademark attorney before launching them in the market.

Reasons to Consider Using a Fanciful Trademark

There are many reasons that choosing a fanciful trademark is often your best choice:

• Fanciful trademarks are absolutely distinctive since they have no meaning. A trademark is stronger when the mark has no connection with the characteristics of the related product because customers can create a stronger association of the mark with your brand. This is particularly true for new companies with a unique business model and a large marketing budget.
• Because of their distinctiveness, fanciful marks are ideal from a legal standpoint and are the strongest kind of trademarks. Choosing a fanciful mark gives you the exclusive right to its use. It's easy to prevent competitors from using it and profiting from it.
• In the event of a trademark infringement or a cybersquatting dispute, a fanciful trademark holder is in a strong position to retain it. On the other hand, generic and descriptive trademarks aren't strong and can't be protected against third-party use. Suggestive trademarks are also a weaker choice than fanciful ones because there is a fine line between suggestive and merely descriptive trademarks.
• If a competitor tries to use a slight variation of your fanciful trademark, the court usually sees this practice as more confusing to the customers than when the competing marks are defined words similar in their sound. Similar fanciful trademarks are usually considered a trademark infringement.

Reasons to Consider Not Using Fanciful Trademarks

While fanciful marks are the strongest type of trademarks, there is a downside that you should definitely consider.

Since fanciful marks are distinctive, they don't tell your prospective customers what your product is. You will have to educate your public before they'll be able to associate your product with the mark. To do so, you'll have to put aside a significant advertising and marketing budget, which isn't feasible for all businesses.

Fanciful vs. Arbitrary Trademarks: Choosing the Right Fit

If fanciful trademarks feel too disconnected from your brand message, consider whether an arbitrary trademark might be more effective. Here’s how they compare:

For industries where consumer trust and clarity are critical—like health care or tech—fanciful trademarks provide the strongest legal foundation, but they must be balanced with brand strategy.

What to Do If You Are Accused of Trademark Infringement

It's a scary moment when you receive a cease and desist letter. First of all, you need to understand whether the accuser has a case.

The accusation can be of trademark infringement, cybersquatting, or trademark dilution. Cybersquatting means choosing a domain name with the purpose of profiting from someone else's trademark. Trademark dilution means using a trademark and worsening its owner's reputation.

In the case of trademark infringement, your accuser will need to prove that he/she is the legitimate mark holder and that your mark is confusing to customers. It's easier to prove trademark infringement when the mark is fanciful since it's inherently distinctive. If this is your case, the accuser can probably win the lawsuit, and you should look for a good trademark lawyer.

It's a different case if you have used a trademark with the sole purpose of commenting on it or using it in an artistic way. In fact, under the First Amendment, the court protects the public's right to use trademarks for such purposes.

Fanciful trademarks are the strongest type of marks and are often a good choice for businesses. When choosing a trademark, it is essential to consider the long-term issues.

Frequently Asked Questions

1. What is a fanciful trademark? A fanciful trademark is a completely invented word used solely to identify a product or service, offering the highest level of legal protection.

2. How do I create a strong fanciful trademark? Choose a word with no prior meaning, ensure it's easy to pronounce and spell, and verify it doesn’t resemble existing trademarks. Conduct a legal search before use.

3. Why are fanciful trademarks so powerful legally? Because they are inherently distinctive, fanciful trademarks qualify for immediate registration and receive broad legal protection.

4. Can a fanciful trademark lose its rights? Yes, through "genericide"—when a brand becomes the generic term for a product. Vigilant brand use and enforcement are required to maintain rights.

5. Should I hire a lawyer for trademark registration? Yes. A trademark attorney can help with clearance searches, registration with the USPTO, and protecting the mark from infringement or dilution.

If you need help filing your fanciful trademark, you can post your question or concern on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.