Archives For generic trademark

From Arbitrary to Generic – The Trademark Protection Spectrum

July 21, 2015 — 3 Comments

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.

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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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Don’t Lose Your Trademark to Genericide

July 8, 2014 — Leave a comment

Once upon a time if you sold Escalators or Aspirin you had to call your product something else, perhaps a moving staircase or pain reliever. Today, however, anyone in the U.S. can use those words to describe their products because the prior owners lost their rights due to Genericide.

What is Genericide

We’ve discussed the topic of descriptiveness previously and mentioned that descriptive terms are hard to protect (you have to prove a secondary meaning, which can be hard to do). We also mentioned that you can’t protect a generic term because a generic term cannot serve as a source identifier. In a similar way, when a trademark becomes so well known and associated with a type of product or service rather than a specific product or service, the mark owner loses the ability to protect their mark. We call that Genericide.

Escalator and Other Examples

For example, the Otis Elevator Company created the word “Escalator” to describe their moving staircase. The term eventually became so associated with moving staircases that the company lost their ability to protect the term. This has happened with other brands as well such as Aspirin, Murphy Bed, and even Dry Ice (a list of other marks can be found here).

A Current Example – “Google”

A great example for our modern era is Google. Of course “Google” is the name of Google, Inc., the search engine company. But you’ve also probably heard people say “oh, just google it.” What they really mean is “search the Internet” but it is easier to say “google it.” As a result, some people argue that “Google” is now a generic word that means to search the Internet. Of course Goolge, Inc. would say otherwise and it is unlikely a court will rule that “Google” is generic quite yet, but it may happen some day.

How to Prevent Genericide of Your Mark

This might leave you wondering what you should do to protect your mark. Here are a few tips.

First, don’t use your mark as a verb. For example, if you were Google, Inc., you would always say, “use Google® to search the Internet.”

Second, try to use the TM symbol for unregistered marks or the ® symbol for registered marks whenever possible. You don’t have to use them in every single circumstance, but you should use them common enough that readers will realize that your mark is a trademark and not a verb.

Third, you should police your mark. If you find someone infringing your mark or using it in a generic way, be sure to request that person stop the infringement or change the way they are using the mark.

Lastly, be sure to register your mark with the U.S. Patent and Trademark Office. And if you want a trademark attorney to help you without breaking the bank, check out our online trademark service at www.MightyMarks.com!

Image: Thinkstock/shansekala

*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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Why You Can’t Trademark a Descriptive Term – The “Hot Yoga” Example

May 13, 2014 — Leave a comment

We’ve mentioned previously that names and slogans may not be protected unless they are distinctive and capable of identifying a particular source of the good or service.

The reasoning behind this section of the Trademark Act is simple: if businesses were able to obtain exclusive rights to descriptive or generic terms, then competitors would be unable to describe their goods and services to the market. For instance, if a restaurateur obtained a trademark for “Restaurant” his competitors (the rest of the restaurant business) would be unable to call their restaurants by that name.

A great example found in the United States Patent and Trademark files is the Hot Yoga application.

The “Hot Yoga” Trademark Application

California based Bikram’s Yoga College of India attempted to register the phrase “Hot Yoga” in connection with education services for yoga. Of course, it is obvious that the phrase simply describes the service itself – that is, yoga in a hot room.

Not surprisingly, the USPTO issued an Office Action (an official document issued by the USPTO to explain problems with a trademark application) denying the application because it was descriptive. In quoting from case law, the trademark examiner said that a mark is merely descriptive “if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant services.”

The examiner explained the reasoning above in the Office Action and concluded that descriptive marks may not be registered because “businesses and competitors [must] have the freedom to use common descriptive language when merely describing their own goods or services to the public in advertising and marketing materials.”

Arbitrary is Better

As a result of this limitation, many attorneys advise clients to be as arbitrary as possible when naming products and services. The more arbitrary and unconnected a phrase is from a particular good or service, the more likely the USPTO is to grant protection. One problem with this tactic, however, is that arbitrary marks are sometimes not very marketable because they do not describe the product or service and thus are more difficult to attract customers.

In practice, many business owners simply go somewhere in the middle and use a term that is partially arbitrary, but also partially descriptive. These trademarks suggest the good or service to the customer without being overly descriptive. Businesses then take their chances with a trademark application.

Secondary Meaning

One last tip: in some cases a company can obtain trademark protection for descriptive terms. For example, “Sharp” in connection to the sale of televisions. While that mark is descriptive of televisions, the name has obtained enough recognition in the market (a secondary meaning) to overcome the descriptive limitation. But we’ll cover this more in a future post.

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Image Credit: Thinkstock/Anna Berkut

*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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