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Trademark Law Considerations

Selecting a Strong Trademark: The Spectrum of Distinctiveness and Why It Matters

“What’s in a name? That which we call a rose by any other name would smell as sweet.”

William Shakespeare, Romeo and Juliet

Shakespeare suggests that a name isn’t all that important. To consumers and business owners, however, it means everything. In commerce, a name or logo can serve as a strong trademark indicating quality safety, desired features, or even responsible business practices.  So consumers will seek out certain names when purchasing services because they trust the product will be reliable due to its associated reputation. Businesses spend vast resources on getting this kind of notoriety, and to stop third parties from using those names and logos. When it comes to selling a business, trademarks and the goodwill they embody can be a valuable asset for the acquirer leading to more favorable negotiations and outcomes for the sellers. Names and logos in the form of a trademark can be extremely important.

In today’s markets, a trademark can serve as the lifeblood of a business. This is why owners will go through such efforts to secure the best one possible–one that provides legal protection and benefits for them. However, not all trademarks are created equal and there exists an important spectrum on which they fall: from fanciful marks (the strongest type) to generic ones (the weakest). Each type of trademark has its own unique benefits. Let’s discuss each one and see which option fits best for your business needs!

FANCIFUL MARKS

Fanciful marks are considered to be the strongest trademarks. A fanciful mark is a completely invented word or phrase. As the words comprising the trademark do not exist in the English language their only purpose is to associate the products or services with the owner. As such, no other business has any reason to use the wording represented by the trademark. EXXON, SPOTIFY, STARBUCKS, and ROLEX are all examples of trademarks that are fanciful. The trademark owner must educate the public through its marketing efforts as to the relationship between the fanciful mark and the owner’s products and services. Since fanciful marks are associated with the trademark owners’ products and services, they carry a direct meaning in consumers’ minds. When people hear these trademarks, there is no doubt what product/service is being offered.

ARBITRARY MARKS

An arbitrary mark is the second strongest type of trademark. An arbitrary mark has common usage in the English language, however, it doesn’t have any connection with a product or service that’s being offered under this brand name. Marks such as APPLE used with computers, DOVE used with chocolates, or AMAZON used with electronic retail services are examples of arbitrary marks. The public has an association with each of those words as they are used in the English language, but the owner educates the consumer to learn to associate it with its products and services in the proper context. This type of mark offers the owner broad protection as the products and services have no connection with the mark. Thus, there is no reason for third parties to use the wording in connection with the products or services except to refer to the products and services of the owner. 

SUGGESTIVE MARKS

Suggestive marks are less distinctive than a fanciful or arbitrary mark. A suggestive mark hints at or suggests a connection to the nature of the product and service of the owner, however, the consumer must make a mental leap to make the connection. Marks such as AIRBUS for aircraft, GREYHOUND for a bus service, and NETFLIX for an internet streaming service are examples of suggestive marks. The marks hint at the services but the consumer must make an imaginative leap to make the connection between the mark and the product or service. Suggestive marks are inherently distinctive but require the owner to educate the consumer less. As a result, a suggestive mark is afforded less extensive protection than a fanciful or arbitrary mark. 

DESCRIPTIVE MARKS

A descriptive mark merely describes an ingredient, quality, characteristic, or feature of the product or service. A descriptive mark is considered to not be inherently distinctive and is not granted trademark protection at the outset. That being said, through continued usage and as consumers come to associate the mark with the owner’s products and services, a descriptive mark may gain “secondary meaning” and acquire distinctiveness that would allow it to be afforded trademark protection. Marks such as SHAKE SHACK for restaurant services offering milkshakes, BRITISH AIRWAYS for an airline from Great Britain, and HOLIDAY INN for hotel services are examples of descriptive marks. Due to the lack of distinction and the potential need for third parties to use the words to also describe characteristics of their products and services, a descriptive mark is a weak trademark and does not provide protection for the owner, until the owner can show it has acquired distinctiveness. Even then, the protection a descriptive mark provides is narrowly tailored. 

GENERIC WORDS

Generic words are not considered trademarks and will never be afforded trademark protection. A generic word refers directly to a product or service. Words such as COFFEE for coffee, CLEANING SERVICE for cleaning services, or PEN for pens are examples of generic words. The consumer is unable to distinguish between the source of the products and services in question and the source of other similar products and services on the market. Accordingly, generic words fail to serve the purpose of a trademark and due to the need of third parties to use these words in association with their products and services, they are not afforded trademark protection. 

CHOOSING A STRONG TRADEMARK – AND A WORD OF WARNING

Trademark protection and consumer recognition hinge on distinctiveness. The more distinctive a mark the more trademark protection and consumer recognition it garners. Ideally, a business owner considering a trademark will select a fanciful mark consisting of an invented word. A fanciful mark has its drawbacks, though. In initially entering the market, as consumers are unfamiliar with the word, the owner will have to invest significant resources and efforts to educate the consumer and foster an association between the mark and the owner’s product or service. The owner of an arbitrary mark may have an easier time educating the consumer as the consumer is at least familiar with the word, however, fostering the association may take time and effort. 

A suggestive mark is an attractive choice as it is inherently distinctive, is afforded trademark protection, and requires far less education of the consumer as the trademark provides hints to the nature of the owner’s products and services. The consumer only needs to be nudged to make the connection. The downside is that it is a fine line between a suggestive mark that is granted trademark protection and a descriptive mark that is not afforded trademark protection. If the USPTO refuses to register the mark for being merely descriptive, it may take time and resources to successfully argue the mark is suggestive, if it is possible at all. 

If trademarks are not properly policed, even a fanciful or arbitrary term may become genericized. Due to the widespread and unchecked use of a trademark to refer to products or services, consumers start using that mark as the name for all similar items. The marks ESCALATOR for moving stairways, BAND-AID for adhesive bandages, and XEROX for photocopy machines and services have suffered from being used generically by consumers who now often simply call all products of a similar nature “escalators”, “bandaids”, and “Xeroxes.”  In such an event, the mark is deemed to have lost trademark protection. It’s important for a brand owner to track its mark and take actions that correct consumer behavior in order to avoid the genericization of their brand names.

Choosing a strong trademark comes down to a balancing act between the attractiveness of the mark, the products and services being offered under the mark, the need for strong trademark protection, consumers’ familiarity with the words, and the time and resources the owner is willing to spend in educating the public of the association between the mark and its products and services. If you have any questions regarding your choice of trademarks or would like assistance in determining if a trademark is right for your business, please do not hesitate to reach out to Mayukh Sircar at mayukh@bagchilaw.com.

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