United States: Walk Softly And Carry A Strong Trademark

Last Updated: October 8 2004
Article by Diane Duhaime and Elizabeth Pasquine
This article is part of a series: Click Do You Know A Trademark When You See One? for the previous article.

This is the second in a series of introductory articles on the topic of trademark law. To view the first in the series please click on the Previous Page link at the bottom of this page

In this second installment of our series about trademark law, we will address the continuum of trademarks from strongest to weakest. When selecting a new mark, companies often select marks that are descriptive of the product so that consumers will quickly ascertain the nature of the product. As discussed below, descriptive marks are not immediately protectible as trademarks. Therefore, a company’s investment in a strong mark is important in terms of affording the trademark owner with greater legal rights in both enforcing and defending its mark from day one.

Trademark law categorizes marks based upon their inherent level of strength. Fanciful marks are the strongest marks from a legal perspective: they are inherently strong and distinctive because they consist of made-up words, such as EXXON® for crude oil and KODAK® for photographic cameras. Arbitrary marks are the next strongest category of marks. These marks use common words to identify and distinguish products that are not normally associated with those products. APPLE® for computers, and MARS® for candy are examples of ordinary dictionary words used in an arbitrary fashion. Less strong, but also immediately protectible, are suggestive marks. Suggestive marks provide a hint about the nature of the goods or services, but they require some mental gymnastics to arrive at the connection. Such marks would include COPPERTONE® for suntan oil and CHICKEN-OF-THE-SEA® for tuna fish.

The weakest of potential marks fall under the descriptive category. Descriptive terms are not initially protectible as trademarks because they immediately convey information about the goods and services. TASTY LEMONADE for delicious lemonade and SPEEDY DRY CLEANERS for fast dry cleaning services are examples of descriptive marks. In other words, at least initially, a company is not entitled to exclusive ownership of terms that directly describe the goods or services because the public is free to use such terms in relation to the same goods or services. Geographically descriptive terms (e.g., CONNECTICUT WINE for wine made in Connecticut), laudatory terms (e.g, best, premium, original), and surnames (e.g., Smith, Jones) are treated in a manner similar to descriptive terms.

After several years of use, however, descriptive marks may eventually become protectible as trademarks if they have "acquired distinctiveness," or developed "secondary meaning," in the descriptive terms. For example, MCDONALDS® for restaurant services, MRS. SMITH’S® for frozen pies, and BANK OF AMERICA® for banking services, are all examples of marks that now enjoy legal trademark protection, but were not initially protectible as trademarks.

The phrase "generic mark" is a misnomer and an oxymoron because generic terms can never function as trademarks to indicate the source of goods or services. The generic term is the good or service. For example, "all news channel" has been held generic for television broadcasts, "cola" is generic for a type of soft drink, and "mart" is generic in relation to stores or markets.

Also, it is possible for terms that started out as trademarks to become generic. When consumers identify a product by the trademark only, instead of the trademark with the generic term for the product, and if a trademark owner fails to police such misuses of its mark, that mark can become a victim of "genericide." For example, the terms "aspirin," "escalator," and "cellophane" were once valid trademarks in the United States, but have since become generic for the goods. To avoid having trademarks held generic, trademark owners should make an effort to use their marks with the generic terms for the goods or services, (e.g., "ROLLERBLADE in-line skates" and "JELL-O brand gelatin") to inform consumers about the nature of the product offered under the mark.

In conclusion, selecting marks on the stronger end of the continuum is almost always a better investment initially than is selecting weaker, descriptive ones. Our next trademark law article will discuss the importance of obtaining early legal review of the newly proposed (and, hopefully, strong) mark to ensure it is available for use, and eligible for registration, in the relevant countries.

This article does not constitute legal or other professional advice or services by JORDEN BURT LLP and/or its attorneys.

JORDEN BURT LLP is a law firm with a unique focus on financial services and a national reputation in high stakes litigation, financial regulation and product counseling.

To view the third in this series of introductory articles on the topic of trademark law please click on the Next Page link below.

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This article is part of a series: Click Do You Know A Trademark When You See One? for the previous article.
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