IntroductionTrademarks are routinely interpreted in the courts as “strong” or “weak”, or somewhere in between. The entrepreneur should always endeavor to develop strong marks from the earliest stages of his enterprise’s development. Trademarks are evaluated on a continuum ranging from generic, to descriptive, to suggestive, and finally, to arbitrary or fanciful. Recall that a trademark distinguishes the goods of one from all others.
Generic MarksGeneric marks are trademarks that merely denote the product itself, rather than the source of the mark. Generic trademarks are never entitled to trademark protection. One cannot claim the word “Car ” as a trademark for an automobile. The policy is simple: granting a trademark for a generic term would remove that term from the public lexicon–thereby excluding the public from its use.
Rarely, famous trademarks lose their trademark status because the public begins to associate the trademark name with the underlying product. This happened to Thermos, and Escalator–these dominant trademarks became such popular names that the marks became no more than generic identifiers of their underlying products.
INSIDER TIP : Create a strong mark right out of the gate. Weak marks can be difficult to protect, and can cause frustrating litigation.
Descriptive MarksDescriptive marks are slightly stronger than generic marks, but are only entitled to trademark protection under certain circumstances. Descriptive trademarks are marks that describe a significant characteristic of the underlying product or service. Descriptive marks generally suggest the ingredients, qualities, or characteristic of the product or service they represent. Examples of descriptive marks include “UnCurl ” for a hair-straightening product, and “The Sak ” for women’s handbags. The policy against granting trademark protection for descriptive marks mirrors the policy with respect to generic marks.
Descriptive marks can attain trademark status, however, if they can attain “secondary meaning”. Secondary meaning is the artificially acquired distinctiveness that marks earn through strong consumer association. Secondary meaning is quite a hurdle, and marks may only earn secondary meaning status by presenting strong evidence of consumer recognition, length of use, and exclusivity of use.
Suggestive and Arbitrary TrademarksSuggestive marks are those marks that require the imagination, thought and perception of a consumer in order to determine the nature of the goods. In this category a mark is considered as inherently distinctive and worthy of protection immediately. Such marks do not need the requirement of secondary meaning. Arbitrary or fanciful marks are treated like the suggestive marks. They are inherently distinctive.
Arbitrary marks are those marks that use a familiar word in an unfamiliar way, while fanciful marks are those marks which are invented solely for its use as a trademark.36
INSIDER TIP : If you want to create a strong mark, follow the lead of the pharmaceutical industry’s sophisticated branding programs. Marks like “Valium” and “Viagra” are completely fanciful terms, and are among the strongest marks around.
The strongest marks are those that are considered fanciful. A fanciful mark is one that has been made up or invented by its owner. Fanciful marks are either previously unknown words, or archaic or obsolete terms that are no longer commonly known. Non-word marks (letters, numbers, designs and pictures) may also be considered fanciful. Examples of fanciful marks are EXXON®, KODAK®, and XEROX®.
Arbitrary marks are the next on the spectrum of trademark strength. An arbitrary mark is one that may have a commonly known meaning, but the meaning is unrelated to the products for which the mark is used. Examples of arbitrary marks are APPLE® (for computers), DELPHITM (for computer software), and RADIUSTM (for a restaurant).
Suggestive marks are not as strong as fanciful and arbitrary marks, but are nevertheless good marks as they, like fanciful and arbitrary marks, are considered “inherently distinctive.” A suggestive mark is one that hints at the products in a clever way, but does not actually describe the products. Examples of suggestive marks are FROOT LOOPS® (for breakfast cereal), JOIE DE VIVRETM (for a toy store), and SATURDAY’S CHILDTM (for a children’s clothing store).
“Merely descriptive” marks, the next on the spectrum, are only protectable if they have acquired secondary meaning. In the absence of secondary meaning, the United States Patent and Trademark Office (PTO) will not register a descriptive term, and courts will not recognize it as a trademark for the purpose of enforcing it against third parties. A mark is considered merely descriptive when it consists only of a term or symbol that describes the intended purpose, function, users, nature or desirable characteristic of the products. Examples of marks for which the PTO refused registration as merely descriptive include UN-CURL (for hair care preparation for straightening hair), WEB BUSINESS (for prerecorded videos, audio cassettes, CD-ROMs, and laser discs dealing with products and strategies on the Internet); LATIN AMERICAN PEOPLE DEVELOPMENTS (for magazines in the field of providing information regarding Latin Americans), and PATENT & TRADEMARK SERVICES, INC. (for legal representation in the area of intellectual property). Laudatory terms (e.g., BEST, RELIABLE, TASTY) are usually considered to be merely descriptive. The rationale behind refusing registration of merely descriptive terms says that such terms should remain available for public use, and no one person should be able to preclude others from using them. Refusing registration for such terms is also consistent with the function of trademarks, that is, providing a distinctive identifier of source.
An otherwise descriptive mark acquires secondary meaning and may be registered if consumers have come to associate the mark with one particular source, and no other source. This may occur where the mark is used in trade for a significant period of time or where the owner of the mark expends significant time and energy in making the mark known to the public through advertising and marketing efforts. A trademark owner must prove secondary meaning before an otherwise merely descriptive term or symbol will be treated as a protectable mark. A customer survey is often useful in providing secondary meaning, but is not required.
Generic terms are not protected as trademarks by the PTO or the courts under any circumstances. A generic term is the name of the product itself, and cannot function as a mark. For example, one cannot claim the word BREAD as a mark for bread. Interestingly, a mark that was once fanciful, arbitrary or suggestive might actually become generic if consumers come to consider the mark as the name of the product (rather than as a distinctive identifier of source). Classic examples include the terms aspirin, cellophane, thermos, and trampoline, which were all at one time trademarks and became generic because consumers came to identify and use the marks as the name of the products themselves. This phenomenon is often a function of the product’s popularity in the marketplace, and may occur regardless of how the trademark owner uses the mark. Sometimes it is the trademark owner’s own use of a mark as a generic term that results in loss of trademark rights. In order to prevent their marks from becoming generic, we recommend that our clients follow sound Trademark Usage Guidelines.
Thus, from a trademark perspective, the strongest marks are those that are fanciful or arbitrary, and suggestive; the weakest are those that are merely descriptive. Generic terms cannot be trademarks. From a business perspective, sometimes a fanciful or arbitrary mark may not be appropriate for a particular product. Nevertheless, whenever possible, trademark owners should take care to choose a strong mark that helps to position their products in the marketplace, and to avoid choosing one that is considered merely descriptive or generic.