Choosing a Trademark. The choice of a trademark can be critical to the ability to protect one’s rights in a mark. A weak mark may not serve as a good identifier of source. A strong mark, which becomes identified in the mind of the consumer with a particular product or service—e.g., LEXUS® for luxury cars or AT&T® for long distance telephone services—makes possible more effective protection of rights. Thus, it is easier for the owner of a strong mark to preclude third parties from adopting similar marks than it is for those with weak marks. By helping our clients identify and select strong marks, we assist them in developing trademark portfolios that become valuable business assets.
It is natural for the owner of a trademark to want to choose a mark that tells consumers something about its products. Unfortunately, this understandable tendency can sometimes come into conflict with certain principles of trademark law. In the United States, as well as in most other jurisdictions, only “distinctive” terms may be protected as trademarks. Terms that are considered “merely descriptive” or generic are generally not able to function as trademarks and will not be protected.
The line between an imaginative mark that cleverly suggests the nature of the products for which it is used and a mark that is “merely descriptive” of those products can be quite fine. Case law in the United States describes a spectrum of types of marks: fanciful, arbitrary, suggestive, descriptive and generic.
The “Strength” of a Mark. 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), DELPHI™ (for computer software), and RADIUS™ (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 VIVRE™ (for a toy store), and SATURDAY’S CHILD™ (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 (USPTO) 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, uses, nature or desirable characteristic of the products. Examples of marks for which the USPTO 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 is 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 USPTO 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.
Trademark Searching. An important investigation should follow the selection of a trademark. Our firm has vast experience in conducting searches to evaluate the risk of potential claims by those who might assert prior rights to that mark or a similar mark. Searching may be done at both the national and international levels. “Likelihood of confusion” is the standard in making this evaluation, and a variety of factors are considered.
A so-called “direct hit” search is focused only on identical marks, and may be used for screening purposes. A more robust search – referred to as a “full” search – is usually recommended. In the U.S., a full search is typically conducted among federal registrations, applications for federal registration, state registrations in each of the 50 states, common law sources such as industry publications and trade name databases, Internet web pages, and Internet domain names. We work with a well-known trademark research company in conducting full searches for our clients, and are able to pass on our volume discount from the vendor to our clients in full.
Searching not only allows us to assist clients in determining the chance of successfully obtaining a federal or state registration for the selected mark, but helps us to confirm whether an Internet domain name associated with the mark is available, a factor which can be critical to a client’s business. Conducting a clearance search can prove invaluable in formulating a successful trademark strategy.
Please contact one of the members of our Trademark Practice Group if you would like to discuss any of these issues further.