On My Mind Blog

Lawyers generally prefer an inherently distinctive term with strong source significance—a coined, arbitrary or suggestive term. Such a term requires consumer education about the nature of the product or service, but the mark immediately gets broad protection against confusingly similar marks.

Marketing managers generally prefer a descriptive term, which helps consumers readily understand the nature of the product or service. But such a mark starts off with weak source significance, is not protectable until after consumers recognize this significance (called “secondary meaning”), and even then may have only narrow protection against similar marks.

The art lies in choosing a term in the middle of the spectrum that suggests something positive about the product or service but does not merely describe it.

Of course, before you adopt a mark, you should arrange for a clearance search to avoid infringing someone else’s rights.

The Spectrum of Distinctiveness.

Coined terms (like Google web searches) are the strongest marks for legal purposes but they are weakest for marketing purposes.

Arbitrary terms (like Apple computers) are strong marks legally (they describe something else) but they are weak for marketing.

Suggestive terms (like Roach Motel insect traps) are strong marks legally and they are somewhat better for marketing purposes.

Descriptive terms (like Beef & Brew restaurants), as well as geographic and personal names, are initially weak legally until they have acquired “secondary meaning,” but they are strong for marketing purposes.

Generic terms (like The Computer Store computer sales services) are never legally protectable. They may initially be attractive for marketing, but you cannot prevent competitors from using them.

How do you distinguish Suggestive from Descriptive terms?

Distinguishing between suggestive and descriptive terms requires judgment that can challenge even an experienced attorney or marketing executive. The issue is whether consumers are more likely to regard the term on the one hand as a symbol of origin or on the other hand as a mere description of the nature, characteristics, use, quality or ingredients of a product or service. This characterization requires exclusive trademark rights to be balanced against the needs of competitors to describe their products or services.

Points to keep in mind.

• Misspelling generally does not convert a descriptive term into a suggestive term (Tea Quila alcoholic beverages and Mitey Fast auto maintenance services were still held descriptive).

• Double meanings can tip the scale towards suggestiveness and away from mere descriptiveness (L’Eggs hosiery in egg shaped containers).

• Stylized display or an accompanying logo may add a source recognition element, but exclusive rights may apply only to the stylization or logo and not to the word (Lite beer).

• A descriptive or generic term for one item (Safari jacket) can make a wonderfully suggestive mark for another (Safari tobacco).

• Even a descriptive term can become a strong source identifier with sufficient advertising and sales (5-Hour Energy drink).

• No one can claim the exclusive right to use a generic term as a mark for the item it identifies.  This is true even if consumers may have come to think of that term as signifying a particular source. (Boston Duck tours for duck boat tours in Boston).

Trade Dress considerations.

The way a package looks (its graphics or shape), and the way a product looks, is called trade dress. Trade dress can be more effective than a word in attracting customers, and it sometimes can indicate source.

As applied to a package, some designs can be inherently distinctive, just like a word (a perfume bottle shaped like a statue). Others may require proof of “secondary meaning.” Since the spectrum for word mark distinctiveness does not easily apply to trade dress, a different distinctiveness test asks whether the design is (1) unique or unusual in a particular field; (2) a mere refinement of a known ornamentation for a particular class of goods; or (3) a common or basic ornamentation.

As applied to a product, trade dress is treated the same as a descriptive word. It can never be inherently distinctive and is protectable only after it has acquired “secondary meaning.”

Some ways to develop “secondary meaning.”

Your use of the informal symbol ™ in immediate conjunction with a descriptive word or a trade dress design will inform others that you regard that element as a trademark. You may substitute a legend expressly stating that the element is a trademark. After a word or design has been registered as a mark, you may use the ® symbol.

In advertising, it helps to use a slogan signifying that a particular trade dress element is a source indicator (“Look for the Pink insulation”).

For further information, please contact William M. Borchard.

This ON MY MIND™ Blog post © 2014 by Cowan, Liebowitz & Latman, P.C., New York, NY. 

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