Trademarks: What you need to know — from Kodak to Apple and beyond04.09.18
So, you might know exactly what a trademark is, what it does, and why a person (or a business) should have one. If you know those three things, then this blog post isn’t for you.
If you think you know what a trademark is, or you think you might need one, and you just want to be sure, then read on …
A trademark is any word, any name, any symbol, any device, or any combination of a word/name/symbol/device, that is used in commerce to identify goods or services and indicates to relevant consumers the source of those identified goods or services. For example, Judy Smith sells soap to shops in town. She calls the soap, “Flubo.” The term, Flubo, is a name used in commerce to identify goods, and it serves to inform consumers of its source (i.e., there are no other persons/companies selling Flubo).
Trademarks can be strong, or they can be weak. Trademark practitioners and adjudicators refer to this concept as a “spectrum of distinctiveness.”
- At one end of the spectrum are the strongest types of trademarks, which are known as fanciful. These are neologisms, invented words, terms that are completely made up. These marks are inherently distinctive and protectable as such. “KODAK” is an example of a fanciful mark that became famous. In the example above, Ms. Smith’s FLUBO mark is fanciful.
- Next on the spectrum are arbitrary marks. These are commonly known words that, when applied to their identified goods or services, have no meaning. “APPLE” for computers is an example of a famous arbitrary trademark. These are also considered inherently distinctive. In the example above, if Ms. Smith called her soap product something like FLOOD, this would be an example of an arbitrary mark. Everyone knows the term flood, but it is not commonly associated with soap product.
- A little further down the spectrum are suggestive marks. These types of trademarks contain a suggestion, or hint, of the nature or quality of a certain characteristic of the goods or services identified by the mark. Importantly, these trademarks do not actually describe the goods or services, and upon encountering the trademark, the consumer must exercise some thought or imaginative leap in order to arrive at a connection between the mark and the underlying goods or services. Because they do not describe the goods or services they identify, they are also considered inherently distinctive trademarks. “MOUNTAIN DEW” for soda is an example of a suggestive mark. In the scenario above, if Ms. Smith called her soap product BUBBLISH, she would be using a suggestive mark.
- Lower on the spectrum are descriptive marks. These are not inherently distinctive. Because these terms are descriptive of their underlying goods or services, they cannot receive protection as trademarks without something more. Trademarks such as COCOA PUFFS or FRUIT ROLL-UPS are descriptive marks that have, over time, achieved trademark status in the minds of the relevant consuming public. When these types of marks are first used in commerce, they merely describe the goods they represent. However, over time, they “acquire distinctiveness” after years of use. Essentially, they develop a “secondary meaning” in the minds of consumers, and this secondary meaning is a trademark association between the marks their particular products. In the example above, if Ms. Smith called her soap, FRESH AND SUDSY, it would be descriptive of certain characteristics associated with soap. However, over time, it might be able to achieve trademark status, provided the terms used in commerce come to acquire distinctiveness in the minds of soap purchasers, who upon hearing FRESH AND SUDSY immediately associate the mark with Ms. Smith’s soaps.
- On the opposite end of the spectrum from fanciful marks are those known as “generic.” A generic term is one that describes an overall category of goods and services, and as such, generic terms are too broad and incapable of being used as a trademark. More often than not, a generic term is one that is widely used by many persons or businesses in the relevant industry. So, for example, EMAIL is a generic term for electronic mail, and it cannot be the trademark. Sometimes a good trademark can become so widely used that it becomes generic. This has happened with a number of well-known terms, such as YO-YO or ELEVATOR. In the case of Ms. Smith, if she simply tried to call her product SOAP or CLEAN BAR, or a similarly worded categorical descriptor, she would not be able to obtain trademark protection for the name of her product.
To recap, trademarks are (more often than not) brand names. The strength of the mark, at least initially, depends on the relationship between the term and the goods and services it represents. Trademark rights begin to accrue upon the use of the mark in commerce. For more about whether you can protect your trademark, stay tuned for next week’s post …