After completing this section, you will be able to
- Discover the elements of distinctiveness within trademarks.
- Identify the various kinds of marks used.
The fundamental and overriding requirement for a trademark is distinctiveness. The requirement for distinctiveness is analogous to the requirement for novelty in patent rights and originality in copyright. Without distinctiveness, there can be no trademark.
As Miller and Davis note, “Naturally, a trademark must be distinctive if it is to serve the function of identifying the origin of goods and thereby avoid confusion, deception, or mistake. If a trademark is to protect purchasers from confusion over what they are purchasing, then the trademark somehow must be recognizable, identifiable, and different from other marks.”xxiii
Some trade and service marks achieve distinction via their inherent nature—Nike’s curved “Swoosh” check mark suggesting speed and agility, for example.
But other marks gain distinctiveness as a result of marketing, eventually forming a powerful association over time in the minds of consumers. As an example, the term “Raisin Bran” is merely descriptive of the foods used in the cereal and would not be eligible for trademark registration had Kellogg Company not demonstrated through evidence of use (including sales, advertising expenditures, and consumer surveys) that the buying public had come to distinctively associate Raisin Bran with this particular Kellogg’s cereal.
The public’s distinct association of a trademark to a company is known as secondary meaning, and that is something that can only be established over time. An understanding of secondary meaning is crucial when discussing the spectrum of distinctiveness.
In Abercrombie & Fitch Co. v. Hunting World, Inc. in 1976, Judge Henry Jacob Friendly established five basic categories of marks along a spectrum of distinctiveness, ranging from “fanciful” marks that are inherently distinctive on one end and on the other end “generic” marks that are never distinctive and thus not eligible for trademark registration.xxiv
Fanciful marks are invented words, symbols, or devices that have no relation to the good or service being sold and have no meaning other than to distinctly identify the product or service and distinguish it in the minds of consumers from those of any other vendor. “Xerox” is a good example of a fanciful mark, as are “Google” and “Kodak.” Fanciful marks are considered the strongest type of mark and are prima facie registrable with the USPTO.
Arbitrary marks are real words in common usage that have no descriptive relationship to the product or service being sold. Examples of arbitrary marks include “Apple” (for the computer company), “Oracle” (for the software company), and “Galaxy” (for the mobile phone). Arbitrary marks are also unreservedly eligible for trademark registration.
Suggestive marks are marks that suggest or imply a quality or characteristic of the goods and services being sold. They require imagination, insight, or perception on the part of the consumer as to the nature of the article.xxv Examples include “iPad” for the tablet computer and “Coppertone” for the sunscreen lotion.
A suggestive mark is the minimum required for a mark to be unconditionally registrable absent a secondary meaning. Or in the words of Judge Friendly, “The validity of the mark ends where suggestion ends and description begins.”xxvi From this point on along the spectrum of distinctiveness, things get a bit tricky.
A descriptive mark explicitly describes the purpose, nature, or an attribute of a product or service and is, therefore, not eligible for trademark registration unless a secondary meaning or association has been developed in the public’s mind through usage.xxvii Ineligible descriptive marks include “Lightweight” and “Faster.” However, if a descriptive mark takes on a secondary meaning in the public mind—“Sharp” televisions, for example, or “Windows” for windowing software—then it can be eligible for trademark registration.
The bar against descriptive marks is designed to protect for public use common concepts and language that everyone needs to use. Imagine having to pay the coiner of the term “reverse mortgage” every time you wanted to describe such a financial arrangement. It would create a nightmare of social costs, which can be prevented simply by allowing the descriptive term to remain in the public domain. The bar against descriptive marks spotlights the overall social purpose of trademarks, which is to prevent fraud and confusion in the market while not conferring a monopoly on anyone.
The last and least distinctive category of marks are generic marks that are simply the common name for the goods and services being sold. Examples of generic marks might be “Aspirin” for the analgesic, or the use of the word “Baskets” for a basket store without any accompanying logo or other design element to distinguish from a merely generic description of the items sold. A generic mark is never eligible for registration no matter how much evidence a mark owner offers that it has acquired a secondary meaning through advertising and marketing.
Ironically, a product or service can become so successful in the marketplace that the public begins to associate its trademark with an entire category of similar products and services. When this happens, a valid trademark can become a generic name and the trademark will be lost, as happened with both “Cellophane” and “Aspirin.” To prevent this from happening, companies like “Kleenex,” “Xerox,” and more recently “Google” have gone to great legal and advertising expense to prevent the generic misuse of their trademarks so these remain valid.
There are many companies that sell aspirin, but aspirin itself can no longer be trademarked.
Adobe, for example, sent emails to many web authors advising them to discontinue using the term “photoshopped” and instead say that their photos were “modified by Adobe Photoshop software.” Similarly, Xerox spent heavily on advertisements warning that “you cannot Xerox a document, but you can copy it on a Xerox brand copying machine.”
- xxiii Op. cit., Miller and Davis.
- xxiv Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, Court of Appeals. Retrieved from http://scholar.google.com/scholar_case?case=9011105700430131407&q=abercrombie+%26+fitch+v.+hunting+world&hl=en&as_sdt=2,38&as_vis=1
- xxv Derived from: http://www.bitlaw.com/trademark/degrees.html
- xxvi Op. cit., Abercrombie & Fitch Co. v. Hunting World, Inc.
- xxvii United States Patent and Trademark Office. (2011, January). Trademark Manual of Examining Procedure (TMEP) - 8th Edition. Retrieved from http://tess2.uspto.gov/tmdb/tmep/1200.htm