How Distinctive Is Your Trademark?

Our intellectual property intern has provided another excellent contribution. See below with my comments to follow:

Spectrum of Distinctiveness for Word Marks

The modern trademark law can be understood as a combination of unfair competition law and the Lanham Act. Section 9 of the Third Restatement on Unfair Competition defines “trademark” as “a word, name, symbol, device, or other designation, or a combination of such designations, that is distinctive of a person’s goods or services and that is used in a manner that identifies those goods or services and distinguishes them from the goods or services of others.” In similar fashion, §45 of the Lanham Act states “the term ‘trademark’ includes any word, name, symbol, or device, or any combination thereof…used by a person…to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.”

A word mark is exactly that, a word, used as a source identifier for the goods or services of a company. For example, Google is a word mark for the company that provides an internet search engine product. Not all word marks are created the same, however, and some garner higher protection under the law than others. There are four or five categories (depending on who you ask) of terms with respect to trademark protection for a word mark. From no protection to the upmost protection, the spectrum of distinctiveness for word marks spans: (1) generic, (2) descriptive, (3) suggestive, (4) arbitrary, and (5) fanciful.

A generic term refers to the genus of which the particular product is a species, i.e., calling a bike shop “Bikes.” A generic term tells the consumer “what” he or she is buying, and such word marks using generic terms are inherently non-distinctive of a products’ source and can never obtain trademark protection.

Similarly, descriptive marks are also inherently non-distinctive, but are capable of acquiring distinctiveness through a showing that consumers have come to associate the mark with the product’s source of origin (secondary meaning). A descriptive mark does not blatantly say what the product is, instead, a descriptive term conveys an immediate idea of the ingredients, qualities or characteristics of the goods. For example, a seminal case found that a company’s condiments for frying fish, “Fish Fri,” was descriptive because the mark gives a description of what the product is. Another example might be calling a popcorn brand “The Best Popcorn.”
Under common law, neither generic nor descriptive terms can become valid trademarks. But under the Lanham Act (Federal trademark), a descriptive term that has acquired secondary meaning can become a valid trademark.

A suggestive term requires imagination, thought and perception to reach a conclusion as to the nature of the goods. For example, a toy Egyptian camel named Niles is suggestive because camels can be found in Egypt, where the Nile River runs. A famous suggestive mark is the Greyhound bus service. The mark “Greyhound” suggests to the customers that like the dog, the bus will be speedy as well.
Beginning with suggestive terms, the remaining categories are all considered to be inherently distinctive marks and protect-able trademarks without the showing of secondary meaning.

Arbitrary marks are words that exist in the dictionary, but have no particular relationship to the goods or services of the company. The most famous of the arbitrary marks is perhaps Apple for computers. The word apple exists in the dictionary, but the fruit has no relationship to the computer that the company sells.

Fanciful or coin terms, are inherently distinctive and accorded with trademark protection. These terms are invented for the sole purpose of serving as trademarks. Kodak for photography equipment, Xerox for printing products, and Babolat for tennis equipment are all made-up trademarks of companies.

From a trademark perspective, it’s best to select a name that is fanciful or arbitrary. One reason for this is that the law must allow competitors to fairly describe their offerings. As well, their consumers might be identifying with the description (i.e. let’s get some hot and fresh pizza tonight) instead of the brand (let’s get some Hot and Fresh brand pizza tonight). There is always a trade-off here but that decision should be made with the input of an experienced trademark expert. Similar pitfalls exist with trademarks that include the surname of a person or that reference a geographical area.

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Mark A. Goodman, Esq.