Putting aside for a moment the problem of other users of similar marks, it should be noted that some marks are inherently more protectable than others. Still others, by their nature, are less protectable.
Generally, trademarks can be classified in the following order of protectability: First, and most protectable, are "fanciful" marks. Second are "arbitrary" marks. Third are "suggestive" marks, while fourth, and least protectable, are "descriptive" marks.
Fanciful marks are essentially "made-up" words, words coined for the specific purpose of serving as trademarks. EXXON (gasoline) and PENTIUM (computer chips), for instance, are made-up words and fanciful marks.
Arbitrary marks consist of real words -- words from our language -- that would have no meaning when applied to the particular goods or services they are marking. APPLE for computers is a great example, as is YAHOO for an Internet portal offering various services. Over time and in context, such names often become inextricably tied to the product or service, especially when well-supported by advertising and marketing.
Suggestive marks are, well, suggestive. They come from words that don't directly describe the product or service, but do hint at some quality of the product or service. Suggestive marks require that the audience use its imagination to make the connection. QUICKEN (the software company) is a name that works that way, as is CITIBANK, which suggests urban banking.
Descriptive marks consist of words that do directly describe the qualities or characteristics of the product or service. But unlike the first three kinds of marks, descriptive names are not automatically protectable. In order to be protectable, a descriptive name must demonstrate trademark distinctiveness by acquiring what is called "secondary meaning." The use of proper names also comes under this heading: McDONALD'S, for example, was not at first a protectable name. But once it acquired a secondary meaning -- today one thinks immediately of particular burgers and fries, not a person named McDonald -- it became a protectable trademark.
Secondary meaning can be demonstrated by a trademark owner who shows substantial sales, advertising and other evidence over time that an appreciable portion of the market recognizes the name as a trademark and not simply as a descriptor of the goods or services. WINDOWS for a window-like graphical operating environment for computers fits this standard.
The bottom line is that it's best to avoid descriptive marks when choosing a name, because unlike fanciful, arbitrary or suggestive marks, a descriptive mark is vulnerable to being copied while you wait for the mark to acquire its secondary meaning.
Finally, be aware (and wary) of what are called "generic terms." Generic terms are, by their very nature, incapable of ever becoming trademarks. Generic terms are words that ARE the particular goods or services offered (as opposed to describing them). A baker, for example, could not protect the name BAKED GOODS for a bakery, but that term would make a strong "arbitrary" mark for an accounting firm (or perhaps a suggestive one, if one meant to imply that the firm was skilled at "cooking the books"!) Likewise, ACCOUNTING would be generic and therefore unprotectable for the accounting firm, but quite arbitrary if used for a bakery.
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