The Strength of a Trademark: The Importance of Being Unique

Oftentimes people ask me surprising things about trademarks, such as; hey, how the heck can Kim Kardashian and Kanye West trademark their baby’s name? Aside from being ridiculous the fashionable couple could not prevent others from giving their own baby the same name, not that normal people wish to name their baby “North”. This gave me the idea to write a series of posts about basic trademark concepts; the first addressing the categories of trademarks and their likelihood of registrerability.

Distinctive or Inherently Distinctive Marks

The strongest type of mark is known as a fanciful mark. This is a word that is not part of the English language, or any language for that matter, but was created solely for use in association with a good or service. This is a made up word that the company uses to identify itself or its products. The most well-known of these is KODAK®  and XEROX®. Fanciful trademarks are the most distinctive, and do not require secondary meaning to be registered with the USTPO or protected by common law trademark. That is, of course, as long as no one else has used it before you.

The next type of mark is an arbitrary mark. This is a word that is part of the English language but has no relation to the goods or services the company provides. Think of Delta® faucets; as an example. The word delta has no relation to faucets; it is just a letter from the Greek alphabet, a mathematical symbol, or a geographic formation at the end of a river. The arbitrary nature of the use is precisely why it makes the mark inherently distinctive and therefore registrable even without established secondary meaning.

Another type of distinctive mark is known as a suggestive trademark. These marks indicate the nature or characteristic of the good or service but do not actually describe what the good is or its purpose. This has always been a bit confusing to me and, I assume, to most people I explain it to. The best example was given by my trademarks professor. Orange Crush, as used to indicate the source of an orange flavored beverage. The mark does not describe the good itself but does describe a characteristic it has, orange flavor. Can you think of other examples?

Non-unique or In-distinctive Trademarks

This is the last category of trademarks and as you may have assumed, marks which are the weakest. These marks are either merely descriptive or have become generic though use of the mark in commerce. The latter is a dangerous situation for any trademark holder and the former tells me you should be more creative when marketing your products. Allow me to explain.

My uncle used to own a business called “Discount Window Blinds”. What do you think he sold? Well the name describes exactly what his business did and what it sold. The problem is descriptive trademarks cannot be easily protected by common law trademark and owner will have an extremely hard time getting the name registered with the USPTO. This is because it would stifle competition too much to disallow others from using the word discount, and windows blinds in commerce. The mark may be allowed registration if the mark has been used in commerce for over five years because it becomes distinctive through its extensive use in commerce. This concept is articulated 15 USC 1052(e)-(f).

The final category is generic marks. Generic trademarks, or perhaps I should just say words, are not ever protectable because everyone has a right to use such words to refer to these goods or services. Also, these are words which have become generic through their use by people over time. Did you know that Asprin used to be a name brand of headache medicine? Most people know it to generically refer to pain reliever instead of indicating a particular source of a good.  This happened because of its long term non-trademark use. Discount Window Blinds could arguably be considered generic unprotectable term as well. It is best to avoid the use of generic terms to refer to your business; so don’t name your buffet “Best Buffet” and don’t expect to get a trademark in the word “Beer” to sell beer.

Having a strong trademark is important for business and choosing one that is inherently distinctive and registerble is much better than using a non-distinctive mark. Make a plan, make sure no one else uses the mark on goods you intend to sell, and most importantly, it is a good idea to speak to an attorney when seeking trademark registration.


Nothing in this article is meant to be legal advice and it is for informational purposes only. If you need legal assistance please contact a licensed attorney.


First Circuit Court of Appeals Upholds 675,000 Judgment in Lawsuit for Illegal Downloading

The First Circuit Court of Appeals has upheld the damages against Joel Tennebaum, a former Boston University Student, in the amount of $675,000. This is stark reminder to all who think that their illegal downloading will go unnoticed by record companies and other copyright holders. While I do agree that the ruling is reasonable and well-grounded in copyright law I do not agree with the First Circuit when the judges ruled that the penalty is not; “so severe and oppressive as to be wholly disproportioned to the offense and obviously unreasonable.”

Joel Tennebaum was like many college students in the early 2000s, he downloaded music and shared it via peer to peer networks. Many of our friends did the same but Joel was unfortunate enough to get a letter that informed him he was going to be sued. According to the facts of the case he knew this conduct was wrong, ignored warnings from his father, his college, and even a letter from the recording companies. Joel nonetheless continued the activity. When faced with a lawsuit from Sony Joel lied about his activities by blaming burglars and a foster child living at his parent’s house for the activity. In the previous court ruling the jury found Joel’s activity willful. In determining the original damages the court said the jury must consider to following factors;

“the nature of the infringement; the defendant’s purpose and intent; the profit that the defendant reaped…the expense the defendant saved, the revenue lost by the plaintiff…the value of the copyright; the duration of the infringement; the defendant’s continuation of infringement after notice of the copyright claims; and the need to deter…other potential infringers.” Sony BMG Music Entertainment v. Joel Tennebaum No. 12-2146 (2013).

The jury awarded $675,000 which was later reduced to $67,000, Sony appealed that reduction and the court of appeals vacated the judgment and remanded to the trial court with instructions to rely on St. Louis, I.M. & S. Ry. Co. v Williams, 251 U.S. 63 (1919) in determining an award of statutory damages. Based on Williams, the original award of damages was reinstated.

Joel Tennebaum asserted the damages were unconstitutional and violated his due process rights, which brings us to the current case. The court of appeals was tasked with answering two questions. First, “[w]hat is the correct standard for evaluating the constitutionality of an award of statutory damages under the Copyright Act? Second, did the award of $675,000 violate Tennebaum’s right to due process?”  Sony BMG Music Entertainment v. Joel Tennebaum No. 12-2146 (2013).

In answering the first question the court decided that Williams is the appropriate standard for determining statutory damages under the Copyright Act. Williams, a decision nearly as old as my grandpa that remembers dirt roads in Minneapolis and when cars became “popular”, held that statutory damages only violate due process “where the penalty prescribed is so severe and oppressive as to be wholly disproportioned to the offense and obviously unreasonable.” Williams at 66-77.

The second question was more fact specific and examined the purpose of damages under the Copyright Act. Apparently the advent of new technology enabled people to easily steal copyrighted works and congress thought it could lead to the loss of the value of copyrights, reduced income and profits, and job losses. The court continued and asserted that Tennebaum’s actions were egregious. His conduct carried on despite “numerous warnings” and he denied responsibility for making thousands of songs available via peer to peer networks. Therefore the court ruled that damages $675,000 did not violate his constitutional rights. Tennebaum argued that Sony suffered no more than $450 in damages. Williams, however, does not rely on calculating actual damages suffered by a party in the context of statutory damages because the damages are meant to be a punishment for the violation of public law and therefore the amount may be adjusted to address the public wrong rather than redress the private injury suffered by the plaintiff.


Does this same fair to anyone else? Could this be reasonable application of damages when the Williams standard holds that due process is violated where the penalty is so severe and oppressive as to be wholly disproportioned to the offense and obviously unreasonable?

True, Joel did infringe on the copyright and Joel did distribute the songs via peer to peer networks, ignored warnings, and knew it was wrong. He did this in a time when copyright law was unsure how to treat these peer to peer networks in terms of contributory infringement and other areas of the Copyright Act.  Do these damages deter others from infringing? Has the industry lost millions of dollars because of it? Did hundreds of people lose their jobs in the music industry due to peer to peer sharing? I haven’t seen news of that and I do not think that is the case.

Protecting Intellectual Property is important, what Joel did is wrong. However, I was taught two wrongs don’t make a right and by the first circuit holding that these damages were not severe, oppressive, and disproportionate to the offense is pretty unreasonable in my eyes. Although I do have less sympathy for Tennebaum after I learned he tried to blame a foster kid living at his parent’s house.

Let’s wait to see what happens with this becase Thomas-Rasset, 692 F.3d 899, is awaiting to be heard before the Supreme Court, well that is if the court says it will hear it, of course.

Full Opinion