• Trademark Validity: Words & Logos

    Trademark Validity: Words & Logos

    Whether a trademark is protectable or registrable depends on its validity. In turn, the validity of a mark depends on the subject matter of the mark and whether it is distinctive of the goods or services in the relevant market. The subject matter of a mark is its tangible features, such as whether it is a word, logo, or package design. The distinctiveness of a mark is how well it is able to distinguish the goods of the producer from the same or similar goods. Distinctiveness is measured in the context of the goods or services on a spectrum from wholly generic to arbitrary and fanciful. This article will focus on the characteristics that determine whether word and logo marks are distinctive.

    The goals of trademark law are to guard against consumer confusion and to protect the reputation and good will of producers or providers of goods or services. Trademark accomplishes this by protecting trademarks that serve to distinguish the goods of one producer from those of another. Only if the mark distinguishes the goods of one producer from another is it capable of serving as an identifier of the source or origin of the goods or services. The source of the goods or services is determinative of the quality of the goods based on the reputation of the producer. Protecting distinctive marks guards against confusion by providing information about the quality of the goods to the consumer, and it preserves the reputation of the source of the goods by preventing others from capitalizing on the good-will associated with the mark and its owner.

    Not all marks used in connection with goods or services are protectable, however. Only certain subject matter is protectable. The traditional subject matter of a trademark is a word (or words) or logo affixed to a product. Some other types of subject matter include trade dress like product packaging or the look and feel of a particular restaurant. Subject matters that are not protectable as a trademark include certain copyrighted material like specific plots or narratives, and functional features of goods like patented mechanical features. This article will focus on how words and logos, as trademark subject matter, attain sufficient distinctiveness as to come under the aegis of trademark protections.

    Distinctiveness is the core of validity. Distinctiveness is measured on a spectrum from generic to arbitrary and fanciful, but it is incredibly important to recognize that this spectrum exists only in relation to the relevant market of the goods and services which the mark seeks to distinguish. In other words, a term that is generic in one market may be arbitrary in another market. A famous example of this is “Apple.” In the food or fruit markets, the term “Apple” is generic because it is a widely used term for the product. In the computer market, however, “Apple” is arbitrary because the term has nothing to do with computers. Thus, when assessing the distinctiveness or validity of a mark it is paramount to understand what goods or services are being offered.

    Once the relevant market is determined it is time to determine whether the term is distinctive within that market. The spectrum of distinctiveness starts with generic marks, up to merely descriptive marks, then suggestive marks, and finally, arbitrary and fanciful marks. Generic marks are never distinctive and are not protectable as trademarks. Merely descriptive marks are not inherently distinctive, but can be protected if they acquire a secondary meaning. Suggestive, arbitrary, and fanciful marks are all inherently distinctive and protectable. Each category within the spectrum of distinctiveness has its own distinguishing characteristics which help to determine in which category any given mark belongs.

    Generic marks are terms that are indicative of the genus of goods of which the seller’s product is a species. Generic terms are never distinctive. Generic terms are synonyms of the product in question. They answer the question of what you are buying rather than from whom are you buying. If the primary significance of the trademark is to describe the type of product rather than the producer of the product then the mark is a generic term and is not protected. For instance, the term “Fruit” would be generic in relation to the selling of apples because “Fruit” is a term that describes apples. This rule also applies to composite terms comprised of two or more generic terms. For instance, “SurgiCenters” is a composite of “Surgery” and “Center” (this is called a portmanteau). If “SurgiCenters” were used in connection with the provision of corrective eye surgery then it would generic because “Surgery” and “Center” describes the type of business the user of the mark is engaged in. Finally, when terms are used in a manner consistent with the common understanding of the terms then such use is generic.

    Descriptive marks are terms which describe a quality or feature of the goods or services. Descriptive terms are not distinctive unless they acquire a secondary meaning. Examples of descriptive marks include words describing characteristics like color or other physical descriptors, functions, features, and ingredients. Terms like “Fast Acting” or “Low Fat” are descriptive because they describe traits of the product. When the words, standing alone, directly convey information about the product then the term is descriptive. Another way to determine if a term is merely descriptive is to ask whether competitors would likely need the term to describe their own product.

    Descriptive terms can be protected, however, if they acquire a secondary meaning. If a descriptive term with an ordinary and primary meaning is used in connection with a product in such a way that the term comes to be known by the public as specifically designating the product then it has acquired a secondary meaning. Determining whether this has occurred is a factual inquiry into the perceptions of the public. Consumers must associate the term with a good or services coming from a single source. Establishing proof this perception can be done through direct evidence like consumer surveys, or through circumstantial evidence like the amount and manner of advertising, the volume of sales, and the length of use. When looking at this evidence the appropriate inquiry is not merely the extent of the efforts, but the effectiveness of these efforts at altering the public’s perception of the term.

    Suggestive terms invoke ideas or feelings, but do not actually describe the characteristics of the product. Suggestive terms are inherently distinctive and may be protected without proof of a secondary meaning. A term is suggestive if it requires imagination, thought, or perception to reach a conclusion as to the nature of the goods. This is in contrast to a descriptive term which forthwith conveys an immediate idea of the ingredients, qualities, or characteristics of the goods. An example of a suggestive term might be “Obsession” for perfume. It does not describe the actual scent, but rather it infers that the product will confer upon the wearer an aura of irresistibility.

    Arbitrary and fanciful terms have no connection with the goods or services to which they are affixed. Arbitrary and fanciful terms are inherently distinctive and there is generally no debate about whether they are merely descriptive, as can be the case with suggestive terms. An arbitrary term is a real word bearing no logical connection to the goods or services being offered, like “Apple” for computers or “Penguin” for shirts. Fanciful terms are made-up words like “Verizon” for telecommunications services or “Exxon” for oil and gas products.

    It is worth noting here that distinctive terms can lose their distinctiveness and become generic though a process called genericide. When a term, even if it is arbitrary or fanciful, becomes commonly associated with a product such that the public perceives the term to denote all goods of that type, then the term has become generic and is no longer protectable. Perhaps one of the best examples of this is “Aspirin,” once a trademark of Bayer AG for pain relief medication, the term has now come to be used for all brands of that particular drug.

    Logos and graphic images are also measured for their distinctiveness as trademarks from generic to fanciful, but the tests are slightly different. In determining whether a logo design is distinctive courts look at four factors. First, whether the design is a common or basic shape. Common shapes or designs include simple circles, squares, or letters (and if a letter, whether the font is common or unique). Second, whether the logo is unique or unusual in the particular market. This test essentially asks whether competitors are likely to need to use similar graphics (e.g. the use of a seed or root image for the plant market). Third, whether the design is a mere refinement of a commonly adopted and well known form of ornamentation for the goods. Fourth and finally, whether the design is capable of creating a commercial impression distinct from the accompanying goods.
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