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Selection Without Investigation is Like Playing the Lottery

Our discussion under Investigation points out the benefits of a proper investigation or search before making a final selection. My motto is "Search for the intersection where Selection Meets Protection."

What factors should I consider when selecting a term? The determining factors vary in importance depending upon what your investigation reveals. However, everyone should consider the strength of the mark, namely, is it strong or weak, and where it fits on the continuum of marks?

What is a "continuum?" A continuum is "a continuous extent, succession, or whole, no part of which can be distinguished from neighboring parts except by arbitrary division." This means that while some terms fit neatly into on category or another, others are labeled by subjective opinion of courts and trademark examiners.

What is the trademark continuum? The trademark continuum goes from "strong to weak" and is based upon a series of "labels," namely arbitrary, coined, suggestive, descriptive, merely descriptive or generic. While many terms fit neatly into one or more categories, others along the continuum do not fit neatly into one category or the other. The stronger the mark, the greater the legal protection that will be afforded. This also means you as the trademark owner can police you mark and enforce rights with less risk of legal challenges to the validity of your marks. The further along the continuum one goes the less protection. While some categories are "ID", code for "Inherently Distinctive," others are not. Those that are descriptive, merely descriptive or generic terms, we suggest: "Forget about it."

The best way to understand the continuum is to jump on with some real life examples. Be forewarned, some will make sense others won't! Therein lays the key to understanding the often subjective manner in which claims of trademark infringement are decided by the courts. The cases that could go either way emphasize the importance of avoiding finding your business in this situation.

Surf the Continuum with Real Life Examples:

COINED or FANCIFUL are terms that are "made up" to function as trademarks and are inherently distinctive.

KODAK® before becoming a famous trademark was a "word" which did not exist. Instead someone created or "coined" the term to identify the cameras and film.

ALTOIDS®, used as a mark for The Original Celebrated Curiously Strong Peppermint®

Other well known fanciful marks are EXXON®, XEROX® and CLOROX®

Caution: While coined marks can start out strong, some can be at risk of falling to the other side of the continuum by being absorbed into the every day language, becoming generic. With any mark, selection and registration also require proper use and enforcement. Some of the more famous examples of once were, now has been, marks, are "aspirin, cellophane, escalator

ARBITRARY -- An every day word, picture or symbol in common use can be applied in an arbitrary manner to goods and services which are unrelated to the term being used as a mark.

APPLE for computers and music, as well as the famous logo of the "bitten apple, is one of the world's most famous examples.

AMAZON for online retail store services. The Amazon was a river long before the Internet existed by a few thousand years. Of course, based upon the way they chased one of our innocent prior using clients AMAZON itself seems to have forgotten this fact.

Other examples are OLD CROW for whiskey, IVORY for soap, or ICE CREAM for chewing gum.

SUGGESTIVE marks are given stronger protection in the law than descriptive marks. Terms that suggest but do not describe the qualities, ingredients, characteristics of a product are granted the same level of protection as an Arbitrary or Fanciful marks, i.e. no secondary meaning need be shown. As a result a Suggestive marks are some of the best marks of all, but are difficult to select. Without expert guidance, however, new trademark owners gravitate from suggesting to describing, failing to understand the difference. In fairness, many courts have the same difficulty, making the line between suggestive and descriptive extremely difficult to discern, often with conflicting results.

Finding a great suggestive mark is not for the faint of heart. However, if successful, you've found an important intersection where you can stake your claim, one where your selection meets protection.

Examples of marks held suggestive, not descriptive (see below):

ACTION SLACKS pants
CHICKEN OF THE SEA tuna
CITIBANK urban bank
CYCLONE wire fence
FLORIDA TAN tanning lotion
L'EGGS women's hosiery
ORANGE CRUSH soft drink
PLAYBOY magazine
ROACH MOTEL insect trap
Q-TIPS
7-ELEVEN food store chain
WRANGLER western boots and jeans

Caution: Remember no mark is static. The need to maintain proper use and enforcement policies to manage risk apply to all marks. A mark that is originally suggestive can become descriptive by usage of the public or trade. Remember QUIK PRINT? They faced this challenge before the Trademark Office.

Descriptive words which merely describe the qualities, ingredients, characteristics of a product may not be registered or enforced as trademarks unless proof of "secondary meaning" or "acquired distinctiveness" is shown. A "descriptive" mark may also describe the intended purpose, function or use of the goods, class of users, nature of the goods, the end effect upon the user, or a desirable characteristic of the goods and services.

There are literally dozens of examples. Here are but a few compiled by Professor J. Thomas McCarthy in his famous trademark treatise on trademarks, McCarthy on Trademarks.

BUFFERIN buffered aspirin
CHAP STICK skin preparation in a stick
CONTINUOUS PROCESSING computers
5 MINUTE glue that sets in five minutes
FOOD FAIR supermarkets
IVY LEAGUE clothing
HOLIDAY INN motel
OATNUT bread containing oats and nuts
SELF REALIZATION books, tapes and classes for spiritual
improvement through yoga
TENDER VITTLES cat food

Caution: Here lies the battle front for the unwary business owner. Volumes have been written as to the tests for discerning between the suggestive and descriptive, and judges have struggled for decades.

One famous judge wrote in 1925:

"It is quite impossible to get any rule out of the cases beyond this: That the validity of the mark ends where suggestion ends and description begins."

Our best suggestion: Locate a trusted advisor who understands the issues, the tests, and who can be your advocate.

Adoption and use a descriptive term as a trademark leads to two problems that many owners can never overcome:

1. Registration is refused or limited to the supplemental register without evidence of "secondary meaning" or "acquired distinctiveness." Evidence of use by third parties in the field can also be used to defeat a claim a descriptive term has acquired secondary meaning.

2. Enforcement proceedings are more expensive, risky and results less certain since the courts require a much higher standard of proof of acquired distinctiveness before granting protection, and opponent will exploit this weakness to their fullest.

Other Descriptive Terms Requiring Proof of Secondary Meaning

Geographically Descriptive terms that are descriptive of the geographical location or origin of goods and services are not inherently distinctive and require evidence of secondary meaning. This includes indications of any locations on earth such as nations, states, streets, areas of cities, rivers, etc. Like a generic term, they are ordinarily regarded as common property.

Examples held descriptive are endless but a few examples are: LONE STAR, HAWAIIAN, MIDWEST FARMS, NORTH AMERICAN, BANK OF AMERICA, QUAKER STATE, ON BROADWAY.

However, like a generic term that is arbitrarily applied, certain uses are distinctive and do not require proof of secondary meaning.

Examples are

NORTH POLE for bananas
ATLANTIC for magazines
ENGLISH LEATHER for men's after shave

Personal Names and "Primarily Merely a Surname"

A personal name which has been used as a trademark can qualify for federal registration. However, the U.S. Trademark statute has a provision prohibiting registration of marks which are "primarily merely a surname." If you are using your surname as a trademark, be certain to obtain expert guidance on proper use to qualify for registration, and overcome statutory objections in advance

Some surprising, now famous examples which were started their trademark existence as merely a surname:MCDONALD'S for restaurants was held to be "primarily merely a surname in violation of the statute, which was overcome with substantial evidence of acquired distinctiveness or secondary meaning!

PIRELLI for tires

BRASSERIE LIPP - the famous Paris restaurant

Generic terms are not trademarks! They are the bottom of the rung on the trademark continuum. They are the common every day word for the product, unless it is applied arbitrarily to unrelated goods.

Generic terms are the antithesis of a trademark. They are in the public domain, and as a matter of public policy are free for any one to use in their ordinary every day meaning.

An apple is generic for a fruit, but a strong arbitrary mark for computers. SHELL and CAMEL are two other common words which are strong as trademarks when applied to gasoline and cigarettes.

What types of terms are not registerable as federal trademarks?

Merely Descriptive is the test applied the Trademark Office in order to determine whether a mark has ID. It is closely related to the discussion of descriptive terms above.

This is one of the most confusing and difficult areas of federal trademark registration. If a term does not tell the customer only what the goods are, or the quality, characteristics and ingredients, the term is not merely descriptive.

A few examples:

THE LONG ONE for bread-held not merely descriptive
PEST PRUF for animal shampoo to prevent fleas not merely descriptive. But:
RICH 'N CHIPS for chocolate chips cookies is merely descriptive
SCHOLASTIC for school testing services is merely descriptive

Geographically Deceptively Misdescriptive terms can be complicated. In general, if the consumer is likely to believe the goods come from a certain region and attaches importance to that origin, goods labeled as such which are from another location will be refused registration.

A few examples:

MIDWEST FARMS - milk not from the Midwest
NEW ENGLAND for baked goods from Minnesota

But:

VENICE MAID for can goods from U.S. not deceptive
LONDON LASHES for eyelash lengthener not from London
(Neither locations were particularly known for these products)
RODEO DRIVE for perfume not from Beverly Hills-suggested only and aura of status and prestige.

About the Author

Cheryl L. Hodgson, J.D. For expert Branding advice visit:
http://brandaideblog.com
Visit us online:
http://www.hodgson-law.com
BRANDAIDE: Driving Your Brand to Distinction Copyright 2008 Hodgson Law Group

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