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.