Suggestive trademarks hint at aspects of products and services but do not describe them. They “require imagination, thought, or perception” to connect the mark to the goods or services.
By Michael Kondoudis, Small Business Trademark Attorney
This is our EASY guide to suggestive trademarks.
Suggestive trademarks are an important part of branding for many businesses. By choosing the right suggestive trademark and taking steps to protect it, you can ensure that your business has the exclusive right to use it.
In this easy guide, we explain suggestive trademarks, give some tips on choosing the right suggestive trademark for your business, and show you how to protect your suggestive trademark.
We’ll also answer frequently asked questions about suggestive trademarks along the way.
Let’s get started!
CONTENTS
→ What a suggestive trademark is
→ Whether suggestive trademarks can be registered
→ Examples of suggestive trademarks
→ Advantages of suggestive trademarks
→ Common pitfalls of suggestive trademarks
→ How to pick a suggestive trademark
→ Ways to protect your suggestive trademark
→ The benefits of registering suggestive trademarks
→ Condensed Summary
1. Suggestive Trademarks
What is a Suggestive Trademark?
A suggestive trademark is a distinctive mark that alludes, implies, or hints at some quality of a product or service, but does not actually state or describe the product or service outright. Suggestive trademarks have some association to a product or service, but the association is not immediately clear because they do not say it outright. Consequently, customers must use their imagination to connect the mark with the product.
A suggestive trademark is a type of mark that suggests a characteristic or quality of a product, service, or business. Suggestive trademarks require thought and imagination to connect the mark to a product, service, or business. Suggestive trademarks never directly or immediately describe or communicate features, qualities, or aspects of a product, service, or business. As a result, people have to use thought and imagination to connect a suggestive trademark to a product, service, or business.
Suggestive trademarks use terms or designs that hint or allude to specific qualities and/or features of the products or services they brand but do not state them outright. They are connected to the products and services they brand, but the connection is not immediately apparent.
What Makes a Suggestive Trademark Distinctive?
The test for whether a trademark is suggestive is:
Does the mark hint or allude to a quality, characteristic, or property of the product, service, or business that it brands so that thought or imagination is required to make the connection?
If the mark directly or immediately conveys a quality, characteristic, or property, it is not a suggestive trademark.
How Do Suggestive Trademarks Differ From Other Types of Trademarks?
Suggestive trademarks require imagination or a ‘mental step’ to link them to products and services. While suggestive trademarks allude or hint at aspects of products or services, other types of trademarks are either wholly unrelated to the product or service (e.g., Apple®) or outright describe the product or service (e.g., British Airways®).
Can Suggestive Trademarks Be Registered?
Yes, suggestive marks can be registered. Suggestive marks are generally registrable, and the U.S. Patent and Trademark Office accepts and grants applications to register suggestive trademarks. The USPTO considers suggestive marks to be entitled to moderately strong legal protection because they are inherently distinctive.
Do suggestive trademarks need secondary meaning?
No, suggestive trademarks do not need secondary meaning because they are inherently distinctive, which means that they can be registered and protected without proof that customers identify with a certain company through use over time.
Suggestive trademarks are considered distinctive enough to function as trademarks through proper use alone.
Suggestive marks are registrable without a showing of acquired distinctiveness, assuming all other conditions for registration are satisfied.
2. Examples of Suggestive Trademarks
Suggestive Trademark Examples
Suggestive trademarks hint at the nature of products or services without directly describing them and require some imagination to associate them with the underlying products or services.
The following are examples of suggestive trademarks:
TRAVELODGE: is suggestive of hotel services because holiday alludes to times when travel is common
RAIN-X: is suggestive of car wax because the name alludes to prohibiting rain spots
TESLA: is suggestive of electric vehicles because Nicholas Tesla was a renowned scientist in the field of electricity
NIKE: is suggestive for running shoes because Nike was the Roman god of athletics, which alludes to sports and sports gear.
WALMART: is suggestive for retail stores because the name implies a “mart”
THE NORTH FACE: suggests outdoor gear because the north face alludes to mountains, hiking and the like
Consumers who encounter these trademarks in the marketplace need to use their imagination to link them to products or services because the association is not immediately apparent.
The Ten Best Examples of Suggestive Trademarks
These are the ten best examples of suggestive trademarks:
1. RAIN DANCE: is suggestive for car wax because it implies that rain will dance of the finish
2. COPPERTONE: is suggestive for suntan lotion because the color copper brings to mind skin tanning in the sun.
3. CITIBANK: is suggestive for financial services because the terms “citi” and “bank” hint at banking services in cities.
4. NETFLIX: is suggestive of online streaming services because the terms “net” and “flix” imply the Internet and movies.
5. MICROSOFT: is suggestive for software and computers because the terms “micro” and “soft” hint at microchips and software
6. GREYHOUND: is suggestive of travel services because greyhounds are racing dogs, which suggests fast travel.
7. JAGUAR: is suggestive for automobiles because jaguars are exotic and swift, which alludes to exotic sports cars
8. AIRBUS: is suggestive of air travel because it conjures the image of a flying bus
9. KITCHENAID: is suggestive of kitchen appliances that help in the kitchen
10. PINTEREST: is suggestive of an image sharing service because the name alludes to “pinned images of interest”
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The Advantages of Suggestive Trademarks
Suggestive names draw on the power of metaphor and analogy to create positive associations in customers’ minds. Many marketing professionals prefer them because they plant seeds in consumers’ minds as to the nature of branded products and services. So, they support efforts to promote brand identity.
There are some of the many benefits suggestive trademarks:
1. Suggestive trademarks are entitled to legal protection, which makes them easier to protect against infringement.
2. Suggestive trademarks are inherently distinctive and eligible for registration at the U.S. Patent and Trademark Office.
3. Suggestive trademarks are powerful marketing tools because they can allude to aspirational aspects of a brand identity.
4. Suggestive trademarks invite consumers to use their imagination to connect them to products and services, which strengthens brand identities
What are Some Common Pitfalls With Suggestive Trademarks?
There are a few common pitfalls that businesses make with suggestive trademarks. First, they may choose a trademark that is too similar to another one. This could lead to a likelihood of confusion and could invalidate their trademark. Second, they may not register their suggestive trademark with the U.S. Patent and Trademark Office. Without registration, they are not fully protecting their trademark.
3. Picking Suggestive Trademarks
How to Pick a Suggestive Trademark for Your Business
Picking the right suggestive trademark for your business is essential. There are a few key factors to consider when choosing a suggestive trademark. First, you want to make sure that the trademark is inherently distinctive. This means that it should not be descriptive of your product or service but should instead suggest something about it. Second, you want to ensure that the trademark is not too similar to another. This could result in a likelihood of confusion and could lead to your trademark being invalidated. Finally, you want to make sure that the trademark is capable of being registered with the U.S. Patent and Trademark Office. If it is not, you may be unable to protect it.
Hierarchy of Trademarks
The sole functions of a trademark are to identify the source of a product or a service and to distinguish them from the competition. A distinctive trademark performs this function. A distinctive trademark is strong.
It turns out that some marks have a natural tendency to be distinctive. Courts and the U.S. Patent and Trademark Office (USPTO) judge this tendency using the following hierarchy of trademarks:
Fanciful: (most distinctive) a term without a dictionary meaning that is invented for the sole purpose of branding a product or service. They are the strongest trademarks and are entitled to the most protection by courts and the USPTO.
Arbitrary: (highly distinctive) a term with a dictionary meaning that is not related to the product or service with which it is used. They are strong trademarks and entitled to broad protection by courts and the USPTO.
Suggestive: (distinctive) a term that alludes to something about the product or service with which it is used and requires some imagination, thought, or perception to make that connection. They are trademarks and are entitled to protection by courts and the USPTO.
Descriptive: (potentially distinctive) a term that directly conveys something about the product or service they brand. Descriptive marks are only entitled to protection if the owner can show that consumers recognize them as a brand after some period of exclusive use.
Generic: (never distinctive) the common name for a category of product – cannot be trademarked.
As a general rule, distinctive trademarks are preferable because they tend to be stronger and easier to register and protect.
What Are the Five Categories of Trademarks?
These five categories are:
- Arbitrary trademarks
- Fanciful trademarks
- Suggestive trademarks
- Descriptive trademarks
- Generic trademarks
4. Protecting Suggestive Trademarks
Are Suggestive Marks Protected?
Yes, suggestive marks are protected. Federal courts have found that suggestive marks are entitled to protection under Trademark Law.
How to Make Sure Your Suggestive Trademark is Protected
There are a few steps that you can take to make sure that your suggestive trademark is protected. First, you should register it with the U.S. Patent and Trademark Office. This will give you the complete protection that you are entitled to under trademark law. Second, you should use your trademark in commerce. This will help put the public on notice of your trademark ownership. Finally, you should monitor for unauthorized use of your trademark. If you see someone using it without your permission, you can take steps to stop them.
Can you register a suggestive trademark?
Yes, you can register a suggestive trademark with the USPTO.
To be eligible for registration, a suggestive trademark must be distinctive, non-descriptive, and capable of identifying the source of the goods or services.
Register a suggestive trademark
Suggestive marks are generally registrable. They belong to the category of strong trademarks known as inherently distinctive marks. Assuming all other conditions for registration are satisfied, an inherently distinctive mark is registrable on the Principal Register without a showing of acquired distinctiveness.
The Benefits of Registering a Suggestive Trademark
There are several benefits to registering a suggestive trademark. First, it allows you to protect your trademark fully. Second, it gives you the exclusive right to use your trademark. This means that no one else can use it without your permission. Third, it will prevent a competitor from registering the trademark and taking it from you. Fourth, it ensures that your trademark does not infringe anyone else’s trademark. Fifth, it puts the public on notice of your trademark ownership, which helps deter others from trying to use it.
Read about all of the advantages that come with federal trademark registration here.
Tips to Register a Suggestive Trademark
If you’re a small business owner who is looking to trademark your suggestive trademarks, you’ll need to make sure that consumers will be able to easily associate them with the underlying goods or services.
Here are four things to keep in mind when filing for a suggestive trademark:
1. Make sure the mark is suggestive, not descriptive.
2. Make sure there’s a separation between the mark and the goods or services it represents.
3. Don’t use any confusingly similar marks yourself.
4. Be prepared for a longer wait time than with other types of trademarks.
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How Can a Business Make the Most of Its Suggestive Trademark?
To make the most of a suggestive trademark, a business should consider registering it with the USPTO. Registering a suggestive trademark gives a business the exclusive right to use the mark in connection with its products or services. It also serves as notice to the public that the mark is owned by the business and helps to deter others from using it. Furthermore, registering a suggestive trademark can make it easier for businesses to enforce their rights if someone does attempt to use the mark without permission. Registering a suggestive trademark is important for businesses looking to protect this valuable asset.
They should also use the mark consistently and avoid using it in a way that might dilute its power.
With care and attention, a suggestive trademark can be an invaluable asset for any business.
5. Condensed Summary
Suggestive trademarks are marks that have some association with a product or service, but the connection is not immediately apparent. They require imagination, thought, or perception to connect the mark to the nature of the goods or services that the mark brands. There is no specific definition for what constitutes a suggestive mark. However, the mark is most likely suggestive when consumers need to use their imaginations to make a mental connection between a trademark and a product or service.
Ultimately, the US Patent and Trademark Office (USPTO) decides whether a particular trademark is suggestive. The USPTO uses various factors to make its determination, including how well-known the mark is and how much imagination is needed to make the relevant connection between trademark and product.
Suggestive trademarks can be registered with the USPTO. They are protectable under trademark law and are eligible for federal trademark registration.
The USPTO will not register trademarks that are simply descriptive of a product or service. However, suggestive trademarks, because they allude to features of a product or service, are considered inherently distinctive and thus registrable.
6. Frequently Asked Questions
1. Can you register a suggestive trademark?
Yes, you can register a suggestive trademark with the USPTO. To be eligible for registration, a suggestive trademark must be distinctive, non-descriptive, and capable of identifying the source of the goods or services.
Suggestive marks are generally registrable. They belong to the category of strong trademarks known as inherently distinctive marks. Assuming all other conditions for registration are satisfied, an inherently distinctive mark is registrable on the Principal Register without a showing of acquired distinctiveness.
2. Are suggestive marks protected?
Yes, suggestive marks are protected. Suggestive marks are generally registrable, and the U.S. Patent and Trademark Office accepts and grants applications to register suggestive trademarks. Also, federal courts have found that suggestive marks are entitled to moderately strong legal protection because they are inherently distinctive.
3. What are some examples of suggestive trademarks for products?
Suggestive trademarks require some imagination to associate them with the underlying products. The following are examples of suggestive trademarks for products:
COPPERTONE: is suggestive for suntan lotion because the color copper conjures the color of skin tanning in the sun.
JAGUAR: is suggestive for automobiles because jaguars are exotic and swift, which alludes to exotic sports cars
MICROSOFT: is suggestive for software and computers because the terms “micro” and “soft” hint at microchips and software
4. Is Microsoft a suggestive trademark?
Yes, MICROSOFT is a suggestive trademark because it alludes to the company’s products and services without describing them. Micro implies small electronics and soft alludes to software.
5. What are some examples of suggestive trademarks for services?
Suggestive trademarks require some imagination to associate them with the underlying services. The following are examples of suggestive trademarks for service:
CITIBANK: is suggestive of financial services because the terms “citi” and “bank” hint at banking services in cities.
GREYHOUND: is suggestive of travel services because greyhounds are fast, which suggests fast travel.
NETFLIX: is suggestive of online streaming services because the terms “net” and “flix” imply the Internet and movies.
6. Are Suggestive Trademarks Inherently Distinctive?
Yes, suggestive trademarks are considered inherently distinctive. This means that is not necessary to show that distinctiveness has been acquired.
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For more than twenty years, Michael Kondoudis has been the go-to trademarking expert for businesses of all shapes and sizes. Michael is a USPTO-licensed trademark and patent attorney, educator, speaker, and author of the Amazon best-seller: Going From Business Owner to Brand Owner. He is also an authority trusted by national news media on major trademark stories.
Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).
