September 27, 2019, Vol. 9
by Marc Campsen

Trademarks: Do You Have A Protectable Mark?

Following up on Campsen’s Business Blawg Volume VIII (“Trademarks: First-in-time, First-in-right – but where?”) about first-in-time priority rights in a trademark, this post addresses what kind of term can acquire trademark protection in the first instance.

A proposed mark can only acquire common-law or federal trademark protection if it is distinctive, which means that it distinguishes the mark’s user’s goods or services from those of others and identifies the goods or services as those of the user. To determine whether a term is “distinctive,” courts apply a four category continuum ranging from least distinctive to most distinctive: (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful.

The most distinctive category, fanciful or arbitrary marks, are considered inherently distinctive. Fanciful marks are typically made-up words expressly coined for serving as a trademark such as Clorox®, Kodak®, Polaroid®, and Exxon®. Arbitrary marks are generally recognizable words that are used directly in connection with a specific product but do not suggest or describe any quality, ingredient, or characteristic such as Camel® cigarettes and Apple® computers.

Suggestive marks are terms that connote, without describing, some quality, ingredient, or characteristic of the user’s goods or services. Like fanciful or arbitrary marks, suggestive marks such as Coppertone®, Orange Crush®, and Playboy® are inherently distinctive. Descriptive marks, by contrast, merely describe a function, use, characteristic, size, or intended purpose of a good or service but are not distinctive for trademark purposes unless the term has acquired a secondary meaning in the marketplace. A term acquires a secondary meaning when it establishes a mental association in buyers’ minds between the mark and the user as the single source of the good or service. Without the development of a secondary meaning, a descriptive term will not acquire any protection. To distinguish between a potential suggestive or descriptive mark, a helpful rule of thumb is that if the mark imparts information directly, it is descriptive; if it stands for a concept which requires some imagination to connect it with the goods or services, it is suggestive.

Finally, a mark that is generic, which means that it merely employs the common name of a good or service, cannot acquire any protection because it does not signify the source of goods or services or distinguish the particular goods or services from other products in the marketplace. The general public policy prohibiting trademarking a generic term arises from the concern that if a business is permitted to appropriate a generic word as its trademark, it would be difficult for competitors to market their own brands of the same product. For example, the terms “car” and “automobile” are generic and a vehicle manufacturer cannot trademark such generic terms because it would prevent other manufactures from using the very terms that identify the type of product they are selling.

Determining whether a mark can obtain trademark protection all depends on how unique the mark is and the nature of the connection between the term and the goods or services to which it is connected.

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About The Author:

Marc A. Campsen is an attorney at Wright, Constable & Skeen, LLP, where he focuses his practice primarily on litigating employment and business law matters. He is recognized as a Maryland Super Lawyer.

DISCLAIMER: The materials available on this blog are for informational purposes only and not for the purpose of providing legal advice. You should contact your attorney to obtain advice with respect to your particular issue or problem.

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