From Arbitrary to Generic – The Trademark Protection Spectrum

July 21, 2015 — Leave a comment

The ability to protect a trademark depends greatly on the ability of the mark to serve as a source identifier. Courts will usually classify a mark in one of four categories in order to determine if protection should be allowed: (1) Arbitrary; (2) Suggestive; (3) Descriptive; (4) Generic. Marks falling in the arbitrary and sometimes in the suggestive categories can usually obtain protection. Marks falling in the descriptive category can obtain protection only in limited situations. And marks falling in the generic category can never receive protection.

Let’d dive deeper into each.

Arbitrary

The best marks from a trademark perspective are arbitrary marks. These marks, sometimes called fanciful marks, bear no logical relationship to the good or service being sold. Good examples of arbitrary marks are Apple for computers and Kodak for cameras. Design marks can also serve as good examples of an arbitrary mark, such as the Nike swoosh.

Arbitrary and fanciful marks are inherently distinctive and can almost always be protected, assuming there are no conflicting marks already registered.

Suggestive

A mark is “suggestive” if is suggests a characteristic of the good or service being sold. A good example of a suggestive mark is Coppertone, for sun tan lotion because it doesn’t describe the product but it does suggest a benefit of the product (a copper toned skin color). Suggestive marks differ from descriptive marks (below) in that consumers need to use some imagination to associate the mark with the good or service, yet the mark is somehow related to the good or service itself.

Suggestive marks are usually distinctive and can also almost always be protected, assuming there are no conflicting marks already registered.

Descriptive

Descriptive marks are just that; they describe the good or service being sold. Good examples are Holiday Inn for a hotel/inn and Vision Center for eye and optical services. Descriptive marks do not deserve immediate protection because if someone can own a descriptive term, it makes it nearly impossible for other companies to sell goods or services because they cannot use the descriptive term to sell their good or services.

However, descriptive marks can receive trademark protection if they acquire a “secondary meaning.” This means that the consuming public has come to associate the descriptive mark with a particular source selling that good or service rather than the good or service itself.

Descriptive marks can only be distinctive, and thus receive protection, if they acquire a secondary meaning as stated above, again assuming there are no conflicting marks already registered.

Generic

Lastly, generic marks are marks that are simply that: generic.

Good examples of generic marks would be BBQ or Computer. You will never be able to trademark those words because it would then make it impossible for other companies to sell those goods or services using those words.

Need Help?

MightyMarks.com is ready to help businesses across the country with their trademark needs. Visit us online to learn more about how we can help your company.


Image: Thinkstock/vlastas
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

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