This is the first in a series of posts discussing the trademark application process.
The first step in registering a trademark is choosing a viable trademark that can be easily registered and offers maximum protection. The United States Patent and Trademark Office (“USPTO”) will only register distinctive marks which are not likely to cause confusion with marks already registered or in use prior to the applicant’s first use. Choosing a distinctive mark and conducting a proper trademark search can save you unnecessary costs associated with prosecuting the mark during the application process. In addition, selecting a distinctive mark as opposed to a weak descriptive mark typically minimizes the costs associated with defending and enforcing the mark.
A protectable trademark can be inherently distinctive or it can acquire distinctiveness. An inherently distinctive mark is always afforded protection. A mark that acquires distinctiveness is afforded protection because it has acquired secondary meaning. An inherently distinctive mark is one that is suggestive, or arbitrary or fanciful. Arbitrary or fanciful marks are the strongest marks in terms of distinctiveness. A fanciful mark is a term that was conceived by the trademark holder for the sole purpose of serving as a trademark. Examples of fanciful marks include XEROX used in connection with photocopy machines or TYLENOL in connection with pain medication. An arbitrary mark is a word that is applied in a manner that is not ordinarily associated with the good or service. Examples of arbitrary marks include CAMEL used in connection with cigarettes or APPLE used in connection to computers.
A suggestive mark is a mark that requires a purchaser to make an imaginative or perceptive step from the mark to the good or service offered under the mark. Examples of suggestive marks could be ICE MOUNTAIN used in connection with bottled water or SLUGGER in connection with a baseball bat. While ICE MOUNTAIN does not describe a characteristic of the product, ICE MOUNTAIN can give the consumer a mental image of a refreshing beverage, thereby invoking a characteristic of the product. Similarly SLUGGER does not describe a baseball bat, but is associated with the desired effect resulting from the use of the product, that is—slugging the baseball.
A generic mark can never be afforded protection, while a merely descriptive mark can be registered as a trademark upon a showing of secondary meaning. Generic marks are marks that generally describe the product itself or the class of products to which they belong. A generic mark will usually satisfy the “who are you/what are you” test, whereby if the mark can answer this question then the mark will be deemed generic. CORN FLAKES used in connection with corn cereal is an example of a generic mark.
A merely descriptive mark is a mark that will describe to a consumer a characteristic of the product. SPEEDY used in connection with a mail delivery service is an example of a merely descriptive mark, as it describes a desired characteristic of any mail delivery service. Merely descriptive marks are not registrable absent a showing of secondary meaning. Secondary meaning is achieved when the merely descriptive mark has become associated with the product in the consuming public’s mind. Secondary meaning can be shown by evidence such as marketing or advertising efforts, market survey evidence, and the length of time that the mark has been used.
Thus, the two most important lines in this spectrum are the lines between generic and descriptive and the line between descriptive and suggestive. A mark classified on the generic side of the generic/descriptive line will preclude a company from registering the mark altogether. A mark falling on the descriptive side of suggestive/descriptive will require a party to show secondary meaning, which will require more effort and money on the part of the applicant. Therefore, when considering a mark, it would be beneficial to err on the side of suggestive/arbitrary, rather than suggestive/descriptive.
Another important consideration is the amount of marketing effort associated with the different types of marks. A fanciful mark will initially require extensive marketing to create a connection in consumers’ minds between the trademark and the goods or services offered under the mark. However, once that connection is made the mark will have both inherent strength and acquired strength. Similarly, choosing an arbitrary mark will also require a greater amount of marketing effort in order to make the connection in consumer’s minds between the mark and the goods or services. Conversely, a mark that is generic or descriptive will require little marketing or advertising to create a connection between the mark and the good or service because the mark will generally convey to the consumers what is being offered. However, the generic mark will not be afforded any protection if competitors use a similar or exact embodiment of the mark. A descriptive mark may be afforded protection, but litigation may be costly, as the mark owner will need to show secondary meaning to protect the mark. A suggestive mark will require marketing efforts to create the connection in consumers’ minds; but because of the nature of a suggestive mark, consumers may make the connection in their mind upon examining the mark. However, if an applicant has been using the mark in commerce prior to the registration, then these concerns may not be an issue.
