United States: What Should I Call My Underwear? A "Brief" Analysis Of The Strength Of Trademark

A recent, clever commercial for Fruit of the Loom "Breathable Underwear" (click on the link to view video) concisely illustrates a common problem encountered by the marketing departments of many companies when it comes to selecting a new trademark. The commercial begins with two men who appear to be marketing employees in an office standing next to a wind tunnel containing the company's "Breathable Underwear" product. One man comments that the new "Breathable Underwear" product is perfect, and the other responds that it needs a name just as perfect. The two then begin tossing around a number of creative suggestions for product names for the underwear, including:

Cool's Gold
The Pants Snorkle
House of 'Mesh'resentatives
Shiver Me Trousers
Fruit of the Luge
Mr. Meshy goes to Windington
Breezy Fo' Sheezy

The two marketing guys appear to settle on the last name, "Breezy Fo' Sheezy," but then a voiceover cuts them off, saying, "No, we're going to call them "Breathable Underwear."

In reviewing this commercial and evaluating which of the proposed names would be the best trademark under U.S. law, it is remarkable that every other potential name for the product that was floated is likely better than the one that was eventually selected. This is so because the name "Breathable Underwear" probably cannot function as a trademark at all. It is just not distinctive in any way. Moreover, trademarks usually cannot consist of a word or words that describe an aspect or characteristic of the product. Thus, it would be difficult for Fruit of the Loom ever to stop another underwear manufacturer from using the same words, "Breathable Underwear," as a name for a competing product.

It's a very common scenario that often confronts both in-house and outside trademark counsel. The problem stems from the obvious fact that the more unusual and distinctive a trademark is, the less likely it is that it will immediately convey information about the product or service to consumers. And very often, the folks in the marketing department of a company or its outside ad agency will come up with potential trademarks that do just that—convey too much information and describe an obvious and desirable aspect or characteristic of the product. In doing so, they have probably doomed these trademarks because they forever will be inherently weak and difficult to enforce.

Courts today in trademark cases routinely use the distinctiveness spectrum developed by the United States Court of Appeals for the Second Circuit in Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976) to determine the degree of protection that should be afforded to a trademark. In order of increasing distinctiveness, the five categories on the Abercrombie spectrum are: (i) generic; (ii) descriptive; (iii) suggestive; (iv) arbitrary; and (v) fanciful.

A generic word can never, ever function as a trademark. Abercrombie, 537 F.2d at 9. Some examples of generic marks are "Wood" for lumber or "Aspirin" for acetylsalicylic acid. A descriptive term is one that "conveys an immediate idea of the ingredients, qualities or characteristics of the goods." Id. at 10-11. Some examples of descriptive marks include "Tasty" for bread, or "Shatterproof" for glass. Descriptive marks are not inherently distinctive; that is, they do not identify a particular source. Therefore, they can receive protection only if they have acquired something trademark lawyers call "secondary meaning." A mark owner establishes this secondary meaning by showing that people identify the mark with a particular source. Of course, it can take many years and require millions of ad dollars to establish secondary meaning for a descriptive trademark in the minds of the public. Indeed, it may never happen.

Despite the inevitable problems with protecting such trademarks, the marketing departments of many companies tend to propose trademarks that are very descriptive. The reason for this tendency is that because the trademark immediately conveys a great deal of information about the product, it makes it much easier to craft advertisements and marketing campaigns. Like generic terms, however, descriptive terms are often in wide use by others on similar goods, and it would be unfair to allow any one company the exclusive use of words that describe products or services. In the Fruit of the Loom commercial, the name "Breathable Underwear" is highly descriptive because it conveys an immediate idea of the most desirable characteristics of the product. Why shouldn't a company that develops a product with similar characteristics be able to use those same words to accurately describe a characteristic of its competing product? The answer is they probably can, because "Breathable Underwear" is very weak and unlikely to receive much protection as a trademark.

In contrast, suggestive, arbitrary, and fanciful marks start out strong from the start. A suggestive mark "requires imagination, thought and perception to reach a conclusion as to the nature of the goods." Abercrombie, 537 F.2d at 10-11 (quoting 3 Callmann, Unfair Competition, Trademarks and Monopolies § 71.2 (3d ed.)). Examples of suggestive marks are "Coppertone" for suntan lotion and "Chicken of the Sea" for seafood. Because a suggestive mark is deemed inherently distinctive, it is automatically entitled to protection without proof of secondary meaning. A business selecting a new trademark would do well to aim for coining at least a suggestive mark.

The greatest level of protection is afforded to arbitrary and fanciful marks. Arbitrary marks typically consist of a common word applied in an unfamiliar way. Abercrombie, 537 F.2d at n. 12. Examples of arbitrary marks include "Apple" for computers and "Amazon" for online retail services. Fanciful marks typically consist of "words invented solely for their use as trademarks." Id. Examples of fanciful marks include "Kodak," "Ginsu," and "Exxon."

Below are a few guidelines to help you avoid selecting weak trademarks:

Don't Pick Words or Phrases that Cannot Be Registered

There is no point in investing in a trademark that you can't register. Registering the trademark protects it from competitors, ensures your ownership rights in the mark, and makes it easier to enforce your rights in court.

Avoid Purely Descriptive Words

As discussed above, words that describe the characteristics or aspects of the goods or services sold with the trademark are usually weak and unregistrable.

Avoid Surnames

Surnames usually cannot be registered as trademarks, and if they are, they are often extraordinarily weak. A good rule of thumb is that if there are three dozen instances of it in the phone book, pick another trademark.

Avoid Confusing Trademarks

A trademark that is confusingly similar to a registered trademark cannot be registered. Hence, the mark "Sunscreen" for use in connection with a newspaper could not be registered if the trademark "Sun-Screen" has already been registered in connection with a magazine, or other periodical, because of the inevitable consumer confusion that would result.

Avoid Laudatory Words

The goal is to select a trademark that is as distinctive as possible. Thus, avoid laudatory words. Examples include "Best," "American," "Gold," and any number of others. These words are quite commonly used when trying to sell products and services, and if incorporated into a trademark, they ensure that your company will blend into the crowd, not stand out in front of it.

Avoid Three- and Four-Letter Acronyms and All Numbers as Trademarks

IBM, CNN, and ATT are distinctive trademarks because their respective owners spent tens of millions of dollars into making the marks famous. But acronyms are intrinsically difficult to remember, while words, especially colorful words, are easily remembered. Hence "OVS Software Solutions" is not as memorable as "Adobe Acrobat." Likewise, avoid using numbers in a trademark as they tend to be less memorable. Furthermore, there are a limited number of unused acronyms available, so there is an excellent chance that a company's ABC trademark will be confused with someone else's.

Do Use Invented Words

Invented words are words that do not exist in any language, apart from your trademark. Examples include "Ginsu," "Exxon," "Kodak," and "Viagra." Invented words are a good choice for use as trademarks because they are not descriptive and they tend to be quite distinctive. It is even possible to create an invented word by simply combining parts of other words—for example, "Microsoft."

Try Animal or Plant Names

Animal and plant names tend to be quite memorable and, if used appropriately, can convey a positive image while still being distinctive. "Apple" Computers, "BlackBerry," and Ford "Mustang" are good examples.

In sum, don't get caught with your pants—or worse, your "breathable underwear"—down. Spend the necessary time and effort at the start to choose a trademark that will work for, not against, your company. Choosing a distinctive trademark may mean more work and creativity at the outset, but doing so will pay great dividends for years to come. On the other hand, choosing a descriptive trademark almost certainly will bring on headaches for you in protecting and enforcing your trademark.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.