Posts Tagged ‘spectrum of distinctiveness’

Selecting a Strong Trademark

Friday, January 10th, 2020

Not all trademarks are created equal. Certain types of marks are entitled to little or no protection, while others are afforded a strong scope of protection against competing marks. The purpose of a trademark is to inform consumers of the source of the goods or services. Strong trademarks can be used to prevent others from using confusingly similar marks (i.e. source identifiers) in connection with similar goods or services, so the consumer is not confused as to the source. Regardless of whether a mark is a common law mark or a registered mark, the strength of the rights acquired in the mark depends on its level of distinctiveness. There are five categories of trademarks within the spectrum of distinctiveness. Each category will be addressed from the weakest type of mark to the strongest.

Generic Marks: These marks are the weakest and an owner cannot use this type of mark to identify the source of his/her goods or services or register a generic mark with the USPTO. A generic term is one that describes a whole category or a group of goods or services. For example, an owner cannot register the trademark “COLA,” because the generic term describes an entire category of beverages. Because a generic term is simply a descriptor, no one owner can claim exclusive rights to it.

Descriptive Marks: These are the second weakest type of mark and often convey an immediate idea of the ingredients, qualities or characteristics of a good or service. Much like generic terms, these are words or phrases that are commonly used in connection with goods and services and can be difficult to distinguish from one another. An example of a descriptive mark would be “Clean Shower” for a shower cleaning product.  The mark is simply identifying what the product does and uses a descriptive term that is not unique to one specific product. Under the common law, a descriptive mark is entitled to little or no protection, with certain exceptions. The USPTO may not register “merely descriptive” marks. This is because registration would possibly prevent competitors from describing their own products. Sometimes, descriptive marks can become associated with the goods or services with which they are used. After a minimum of five years of using a mark in commerce with goods or services, the mark may be said to have acquired distinctiveness or secondary meaning because purchasers have come to associate the descriptive words with one source for the products or services. At the USPTO, an owner may attempt to show that they used the mark for at least five years exclusively and continuously. If it can be shown that by the fifth anniversary, the mark has acquired distinctiveness/secondary meaning, it may qualify for registration with the USPTO. Two examples of descriptive marks that have acquired a secondary meaning are AMERICAN AIRLINES and KENTUCKY FRIED CHICKEN. Surnames fall in the descriptive category as well, such as the hotel chain HILTON Hotel. Aside from famous marks, when descriptive marks are afforded protection, it is usually very narrow.

Suggestive Marks: These marks often suggest an aspect or feature of an owner’s goods or services without directly describing the product.  There is sometimes a fine line between suggestive marks and descriptive marks. Suggestive marks require more thought to grasp the connection between the mark and the good or service. They are more vague than descriptive marks, which directly describe the product. Suggestive marks have a higher chance of being approved by the USPTO because standing alone, the word or phrase does not immediately convey the goods or services to which it is connected. These marks, which are more unique or creative, can be afforded a broader scope of protection. An example of a suggestive mark would be “COPPERTONE,” for the brand of sunscreen. The mark “COPPERTONE,” suggests the outcome of the product, without directly describing it. Another example is “PLAYBOY.” Some of the most contentious litigation hinges on whether a mark is descriptive or offensive.

Arbitrary Marks: These are existing words or phrases that would not normally be associated with an owner’s goods or services. These are terms or phrases that are unrelated to the good or service itself. They are the second strongest type of mark because the owner is giving a common word or phrase a new or unique meaning by associating it with his/her product. An example of a strong arbitrary mark would be “UBER” for the ridesharing service. While the term “uber” is now associated mainly with the ridesharing service, Merriam Webster’s Dictionary defines the term “uber” as, “being a superlative example of its kind or class.” Other examples include “APPLE” for technological products and “CAMEL” for tobacco products.

Coined or Fanciful Marks: These marks are the strongest, and most well-protected marks. A fanciful mark is a made-up term that does not have a previously existing dictionary definition. A coined term is a new and unique combination of words without a previous meaning. Since these terms did not exist prior to their usage, they are extremely difficult, or even impossible to challenge. Examples include: EXXON, ROLEX, LEXUS, XEROX and CLOROX.

In conclusion, when choosing a trademark, it is important for an owner to come up with a creative name for his/her goods or services.

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