WHAT ARE DISTINCTIVE TRADEMARKS? | TRADEMARK LAWYER EXPLAINS #lawyer

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DISCLAIMER: NOT LEGAL ADVICE. FOR INFORMATIONAL PURPOSES.

TRADEMARKS MUST BE DISTINCTIVE

When selecting a trademark, the key characteristic is its distinctiveness. The most distinctive marks are fanciful, the next distinctive mark is arbitrary, then suggestive, descriptive, and lastly generic. Coined, arbitrary, fanciful, and suggestive marks are considered ìinherently distinctive marksî and are registered on the Principal Register, the primary register of trademarks maintained by the United States Patent and Trademark Office (USPTO). The Courts group marks into four categories based on the relationship between the mark and its product. Some marks are afforded more potent rights and therefore more protection.

The four categories of trademarks, from the strongest to the weakest in terms of being distinctive and protected, are:

(1) Arbitrary and Fanciful (Strongest);
(2) Suggestive (Medium);
(3) Descriptive (Weak); and
(4) Generic (No Protection).

A. ARBITRARY OR FANCIFUL MARKS

A fanciful mark is an invented word with no dictionary meaning. They consist of coined terms. For example, the marks ìExxon,î ìKodak,î ìPolaroid,î ìStarbucks,î ìXerox,î and ìHaagen Daz.î They bear no relationship to their underlying product which are respectively gasoline, cameras, coffee, copy machines, and ice cream.

An arbitrary mark also bears no relationship to its product. For example, ìAppleî for computers, or ìBananaî for tires, or ìAll-Stateî for insurance, or the Nike Swoosh for sports apparel.

Arbitrary and fanciful marks are inherently distinctive and are given a very high level of protection under trademark law. They are prima facie registrable.

B. SUGGESTIVE MARKS

A suggestive mark refers to a particular characteristic of the underlying product. But it does not specifically describe the good. Rather, it is subtle. The consumer must exercise his or her imagination to understand the reference. Suggestive marks are considered distinctive and are given protection. For example, ìWhirlpoolî washing machines, ìCoppertoneî suntan lotion, and ìIvoryî soap.

C. DESCRIPTIVE MARKS

Descriptive marks directly describe the product, or some important characteristic of the product. For example, a depiction of a television for a ìtelevision repair service.î Descriptive marks are initially not protectable. Describing the nature or quality of the good is not protectable, unless it acquires a secondary meaning. As a practical note, in order to make a descriptive mark distinctive, it is possible to give the mark a distinctive type font and register it as a design logo by submitting a Special Form Mark drawing.

D. DESCRIPTIVE MARKS MUST HAVE SECONDARY MEANINGS TO BE PROTECTED

Secondary meaning is when the public perceives the mark as a trademark rather than its primary meaning. A common example is the mark ìHoliday Inn.î The mark must be thought of as a brand and not as a descriptive word. The public must associate the mark with a particular company and not the product in general. The test is for whether the mark has acquired secondary meaning is: Does the consuming public primarily associate the mark with a particular producer, rather than the underlying product? The Court will base the determination of secondary meaning on factors:

(1) Amount and manner of advertising;
(2) Volume of sales;
(3) Length and manner of the markís use (generally extensive use in commerce over a five (5) year period); and
(4) Results of consumer surveys.

Where the Defendant seeks to justify the use of a common word by the argument that he needs it to describe the particular product, Courts have developed a test to determine whether there is an "unnecessary use" by the Defendant. The concept of necessity is evoked not as a standard of legality, but rather as a test for an illegal intent. If there is no real necessity for the use of a particular term, because there are others of equal effect and in common use, or if the Defendant cannot offer a reasonable explanation for the particular usage, then a strong presumption that an intent to unfairly compete exists. The Defendant bears the burden to justify the use.

E. GENERIC MARKS

A generic mark describes the general category of the product. Generic marks are entitled no protection whatsoever under trademark law. For example, the mark ìAppleî could not be used to identify apples as a product. No producer is entitled to have the exclusive right to use a generic term. Furthermore, in some circumstances, an original term can become generic over time through a process referred to as genericity.
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0:00 Introduction
0:26 Coined, Arbitrary, Fanciful, & Suggestive Marks
0:43 4 Categories of Trademarks
2:00 Arbitrary & Fanciful Marks
2:33 "Whirlpool" Washing Machines
2:43 Descriptive Marks
3:07 Practical Note
4:08 SECONDARY MEANING FACTORS
4:26 NECESSITY


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