A suggestive trademark is a word that, when applied to the products or services, requires imagination, thought, or perception to reach a conclusion regarding the nature of those goods or services (i.e., REDLINE® (suggestive for an energy drink giving you potent ingredients), MICROSOFT® (suggestive for microcomputers), and MICRODERMABRASION IN A JAR® (suggestive for a face cream that sloughs off dead skin)). On the other hand, a merely descriptive mark immediately conveys information regarding an ingredient, quality, characteristic, function, feature, purpose or use of the product or service and is not entitled to protection (i.e., LIGHT (descriptive of a light beer), ZERO CARB (descriptive of a dietary supplement that has zero carbohydrates), and SUPERPUMP (descriptive of a dietary supplement that pumps muscles). Most marks fall into the suggestive (protectable) or merely descriptive (not protectable without secondary meaning) categories. While it is tempting to select a descriptive mark because it more readily communicates the nature of the goods or services provided, they not immediately entitled to protection. Merely descriptive trademarks they are only entitled to protection upon proof of secondary meaning, i.e., 5 years of continuous use, consumer surveys, extensive sales, and/or extensive advertising.
Once you establish that you have trademark rights, you need to confirm that you were “first” to use the trademark. The next question is whether there is an infringement of your trademark. This analysis involves a likelihood of