• Denny Esford

Is My Trademark Enforceable?

Now that we’ve covered the basics, let’s get into some of the more detailed aspects of trademark law. What does it take for your trademark to get registered? What kind of trademark receives legal protection? At first blush, this seems like a lot of tricky information, but once explained, these concepts are relatively straightforward.

Here’s a scenario. You start a business, a bakery, for example, and want to give it a clever name and logo. You come up with something original and want to ensure that nobody else can use it. How do you make that happen? Well, if you want protection against potential infringers, it’s best to get a federal registration so you can add that circled “R” at the end of your mark and sue for monetary damages under federal law, even if the infringer has not yet made a profit from using a similar mark.

One of the most important elements of getting a federal registration is demonstrating that your mark is distinctive, i.e. no one else is using a similar mark for a similar product or service. This is determined by a spectrum of distinctiveness and where your mark falls in that spectrum. The strongest legal protections go to fanciful marks, followed by arbitrary, suggestive, descriptive and generic marks, the latter receiving no trademark law protections at all.

Fanciful marks are invented terms. These have no relationship to the product or service being promoted; just a word or short phrase used to uniquely identify the source. Think Kodak—when George Eastman made-up and registered this word in 1888, in no way did it indicate photography tools and cameras. Arbitrary marks are similar to fanciful, but for arbitrary, the word is already in existence. It still bears no relationship to the product or service, but people are familiar with the word before it is arbitrarily used to identify something else. A well-known example is Apple for electronic products and services. Suggestive marks suggest, but do not actually describe what you sell. This category requires consumers to take a step of the imagination in order to figure out what the mark references. Examples include Coppertone for sunscreen or Tide for laundry detergent.

Farther down the enforcement spectrum, descriptive marks can be a bit tricky and should usually be avoided from a trademark perspective. This is because a mark that merely describes your product or service will not receive legal protection unless it has acquired what is known in trademark law as a “secondary meaning,” i.e., you must prove that consumers already think of that mark as identifying your particular product or service. So if you want to sell optics on the Internet tomorrow, choosing Optics Sale as your trademark is a poor choice from an enforcement perspective.

Many business owners find the limited legal enforceability of descriptive marks as counterintuitive—thinking a descriptive mark is the best way to immediately tell a customer what you make or do. This may be true, but because you are essentially taking away a word or short phrase that competitors may need to describe their own product or service, the hurdle to take that word or short phrase away from other businesses is high.

To acquire the necessary secondary meaning for registration, trademark law looks for evidence as to how long you have been using the mark, whether others also use a similar mark for similar product or service, consumer recognition surveys, and how much money in advertising has been invested (usually over many years) to develop the association of your business as the sole source of the product or service the mark seeks to identify.

At the far end of the spectrum opposite arbitrary marks, a generic mark can never receive trademark registration. This is a mark that simply describes the product or services category. Windshield Washer Fluid—it is not unique or distinctive in any way. To use the popular expression: it does what it says on the box. And speaking of enforcement, while a generic mark can never receive trademark protection, some marks can actually become generic when businesses fail to police how those marks are used in commerce.

Perhaps the most famous example is facial tissue. How many of you still ask for a “Kleenex” when you have a runny nose? Proctor & Gamble lost its trademark registration because Kleenex became synonymous to the consumer as facial tissue, as opposed to a Kleenex brand of facial tissue made exclusively by Proctor & Gamble. This is called genericide – when a mark becomes generic. It is not that common, but when it does, it is devastating to a company with so much advertising invested in the mark. Needless to say, policing a mark is important, especially for very famous marks. Call your restaurant McDonald’s—even if your name is McDonald—and you can be assured that a “cease and desist” letter is in your immediate future.

So there you have it. Does your mark fall into one of these categories? Can you think of some other fun examples of fanciful marks or genericide? Next time we will tell you what happens if you decide to file for registration with the USPTO. Stay tuned!

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