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.

Similar Articles
Relevancy Powered by MondaqAI
Lewis Roca Rothgerber Christie LLP
S.S. Rana & Co. Advocates
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Lewis Roca Rothgerber Christie LLP
S.S. Rana & Co. Advocates
Related Articles
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
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

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 or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq 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 of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions