A trademark can be a valuable asset. To develop that asset one must invest the necessary resources to select, register and enforce one’s mark. This note focuses on the first step – selection.
When selecting a mark, it is useful to keep in mind the function a mark performs. Applicants too often select a mark in the belief that a strong mark immediately conveys to prospective purchasers some information about one’s product or service. In fact, however, marks that are “merely descriptive” of one’s product or service are weak. Absent substantially exclusive and continuous use for many years (and possibly despite such use), the trademark office will refuse registration of a “merely descriptive” mark on the Principal Register.
When selecting a mark, it is best to select a term that is at most suggestive of one’s goods or services, and preferably either arbitrary or coined. Consider the following distinctiveness spectrum:
A generic term is a term for the genus itself. An example of a generic term is ASPIRIN for use with analgesics; that term has no distinctiveness, is incapable of acquiring distinctiveness even with extensive use and, therefore, cannot function as a mark for analgesics.
A descriptive term is one that forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services. See In re Bayer Aktiengesellschaft, 82 USPQ2d 1828 (C.A.F.C. 2007) [precedential] (affirming the TTAB’s holding that “ASPIRINA” is merely descriptive for analgesics). The “primary meaning” of ASPIRINA is non-distinctive; it may acquire distinctiveness only if, as a result of substantially exclusive and continuous use, consumers perceive it as having a “secondary meaning” as an indicator of source, i.e., as a mark.
A suggestive mark is one that, when applied to the goods or services at issue, requires imagination, thought or perception to reach a conclusion as to the nature of those goods or services. In registering UN-ASPIRIN for a “pharmaceutical preparation for the treatment of colds” the trademark office presumably determined that consumers would have to engage in some imagination, thought or perception to conclude the product is a non-aspirin preparation.
Arbitrary marks have a common meaning that has no relation to the goods or services being sold. For example, the registered TIGER mark for analgesics is arbitrary because a “tiger” has no relation to aspirin, much as APPLE is an arbitrary mark for computers.
Coined (or fanciful) marks comprise terms that have been invented for the sole purpose of functioning as a trademark or service mark. ZANA is a coined term for analgesics, much like KODAK for film and XEROX for copiers.
Arbitrary and coined terms like TIGER and ZANA used with aspirin are among the strongest types of marks not because they describe (or even are suggestive of) aspirin but because they have a lasting impact on the consumer’s mind. Moreover, courts afford such marks a broad scope of protection and more readily view use of a similar mark for closely related products by competitors and non-competitors alike as an infringement. Those qualities – strong consumer recognition and broad legal protection – deliver return on investment.
Where do your marks fall on the distinctiveness spectrum?