Trademarks are words, phrases, marks, logos or designs that are placed on packaging and goods that identify a unique commercial source for the goods and/or services being sold. The identification is in the minds of the consuming public. To be effective, a trademark must be distinctive. Distinctiveness may be considered as a continuum, ranging from trademarks that are highly distinctive — like GOOGLE for internet search engine services — to trademarks that are not distinctive at all — like TIRES TIRES TIRES for a tire sale and repair shop. Somewhere toward the non-distinctive side of the continuum are descriptive trademarks — like PENCILS as a trademark for an office supply store.

Whether a trademark is distinctive or descriptive depends on the goods or services with which the trademark is associated. For example, the trademark APPLE is merely descriptive for a farm that sells fruits and vegetables. But the trademark APPLE is distinctive for a company that sells computers and computer-related products.

Some types of trademarks are inherently distinctive. These are typically denoted as:

• Fanciful trademarks — these tend to be trademarks that are created names or words like GOOGLE, PEPSI or EXXON
• Arbitrary – these tend to be trademarks using common words but applied to unexpected or unusual products or services like APPLE for computers or OLD CROW for whiskey

There is a final category on the continuum of trademark distinctiveness that is sometimes inherently distinctive but sometimes veers into merely descriptive. These are called suggestive trademarks. The USPTO considers a suggestive trademark to be one that, when associated with various goods or services, “requires imagination, thought, or perception to reach a conclusion as to the nature of those goods or services.” That is, a suggestive trademark suggests what the goods or services are, rather than immediately tells the consumer what they are. Examples include AIRBUS and SPEEDI-BAKE for baking dough. Incongruity is often a factor that makes a trademark suggestive rather than merely descriptive. An example here is TENNIS IN THE ROUND for tennis sports facilities.

Generally speaking, trademarks that are merely descriptive of the goods or services may not be registered by the US Patent & Trademark Office (“USPTO”) on the Principal Register. By contrast, distinctive trademarks can almost always be registered. There is an exception for descriptive trademarks if it can be shown that, over time, the trademark has acquired distinctiveness in the minds of consumers. A good example here is AMERICAN AIRLINES which is merely descriptive, but over time, it came to be distinctive in the minds of consumers.

The USPTO considers a trademark to be merely descriptive if the trademark “describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services.” For example, the trademark DAIRY FARMS is descriptive since it describes the characteristics of business (that is, a farm producing and selling dairy products). Descriptive trademarks also include ones that identify the expected or intended user of the goods or services. Thus, the USPTO held that MOUNTAIN CAMPER was merely descriptive of a mail catalog that sold camping supplies and equipment.

Contact Revision Legal

For more information or if you have questions about creating and registering a trademark, contact the trademark lawyers at Revision Legal at 231-714-0100.

Acquired Distinctiveness: Proving Secondary Meaning

A descriptive trademark that cannot be registered on the Principal Register without secondary meaning is not necessarily unprotectable — it just needs time in commerce. Under 15 U.S.C. § 1052(f), the USPTO will accept a claim of acquired distinctiveness based on substantially exclusive and continuous use in commerce for five years, or on other evidence that the mark has come to identify the applicant as the source of the goods or services. Evidence that the USPTO and courts find persuasive includes consumer declarations and survey data, advertising expenditures, sales volume, and unsolicited media coverage.

The Abercrombie Spectrum in Practice

The distinctiveness spectrum established in Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976) remains the foundational framework for trademark analysis: fanciful marks (KODAK, XEROX) are invented words with no prior meaning and receive the broadest protection; arbitrary marks (APPLE for computers, AMAZON for e-commerce) use real words with no connection to the goods; suggestive marks (NETFLIX, COPPERTONE) require some imagination to connect the mark to the goods; descriptive marks (HOLIDAY INN, AMERICAN AIRLINES) require secondary meaning for registration; and generic terms (ELEVATOR, ASPIRIN — former trademarks lost to genericide) cannot be registered at all.

Genericness and the Risk of Losing a Trademark

One of the most counterintuitive risks in trademark law is that a mark can become too successful. When a brand name becomes the generic term consumers use for an entire product category — genericide — the trademark can be cancelled. ESCALATOR, THERMOS, CELLOPHANE, ASPIRIN, and ZIPPER are all former trademarks lost this way. Preventing genericness requires: consistently using the mark as an adjective modifying a generic noun (KLEENEX tissues, not “a kleenex”); enforcing against unauthorized generic uses in media and by competitors; and educating consumers and licensees about proper trademark usage. A trademark allowed to become generic through neglect cannot be saved by belated enforcement efforts. Contact the trademark attorneys at Revision Legal at 231-714-0100 to discuss selecting, registering, and protecting your marks.