One of the most common mistakes brand owners make when they have an idea for a name that they want to “trademark” is that the trademark of choice is merely descriptive of the goods or services that the brand owner wants to identify with the trademark. Descriptive marks to help consumers to identify their products and services. However, if an infringement situation arises, the descriptive nature of such trademarks may make them weak trademarks because, absent a showing of acquired distinctiveness, a trademark owner cannot prevent others from using descriptive terms to describe such goods or services.
Trademark laws do not afford broad protection for descriptive marks. Otherwise, mark owners would inhibit competition in the sale of goods and services by claiming an exclusive right to use a particular descriptive term in connection with such goods and services. Allowing a mark owner to claim exclusivity to a particular term, absent a showing that the term has come to be recognized by the public as identifying exclusively the mark owner, would deprive other competitors of the freedom to use such terms to advertise and describe their own goods and services.
Therefore, when selecting a trademark, it is important to keep in mind that the stronger the mark is, the greater the scope of protection it will receive. Trademarks are classified along a continuum of marks that include generic terms, descriptive terms, suggestive terms, arbitrary terms and fanciful terms. In the continuum, generic terms are the weakest and fanciful marks are the strongest.
Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services (BASKET for baskets, CLOTHING for clothing). A descriptive mark is one which describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services (e.g., VISION CENTER optical clinic, COMPUTERLAND computer stores). Suggestive marks are those that, when applied to the goods or services at issue, require imagination, thought or perception to reach a conclusion as to the nature of those goods or services (e.g., CHICKEN OF THE SEA tuna, COPPERTONE suntan lotion). Arbitrary marks comprise words that are in common use but, when used to identify particular goods or services, do not suggest or describe a significant ingredient, quality or characteristic of the goods or services (e.g., APPLE computers; OMEGA watches). Fanciful marks comprise terms that have been invented for the sole purpose of functioning as a trademark or service mark and have no known meaning (e.g., EXXON oil and gasoline products, CLOROX bleach).
The distinction between suggestiveness and descriptiveness is an important one because suggestive marks can be registered by the U.S. Patent and Trademark Office (“Trademark Office”) on the Principal Register. Descriptive marks are refused registration on the Principal Register unless the applicant can show that the otherwise descriptive mark has acquired distinctiveness among the consuming public as a unique source identifier for applicant’s specific goods or services, which can be difficult to prove in the absence of extensive use of the mark.
When selecting a trademark it is important to assess the strength of the mark and to balance the desire to use a descriptive mark so as to create an instant association with your goods with the longer term protection afforded by selection of a stronger mark.
Contact Joseph S. Heino (jheino@dkattorneys.com) at 414-225-1452 or your Davis & Kuelthau attorney with any questions regarding trademark selection, registration and enforcement.