IP Law Bulletin

To continue, we consider the perspective of a business person starting a company or product line and considering trademark issues. The first step will be selecting the mark itself. The process of selecting a mark, however, should not be taken lightly. While the future is never known with certainty, taking particular steps in the initial stages of developing a brand can increase the chances of success in the campaign. This is certainly true when selecting a trademark. For example, did you know that trademarks, like salsa and chili, come in four flavors, or rather “strengths”? Well, they do, and while the four varieties may not be mild, medium, spicy, and five-alarm, a prudent business person would be wise to consider the company’s palate when selecting a mark.

The four different strengths

Some specialists would begin with “generic” terms and aver there are five different strengths. But “generic” equates to zero strength, and who wants salsa or chili with no flavor? A generic term is the noun for the genus of which any particular product is a species. A generic term cannot function as a trademark. Otherwise I would open up BANK to take deposits and make loans, and no one else would be able to call her business a “bank.” That is why we have WELLS FARGO bank, SANTANDER bank, and CITIZENS bank. Think of the trademark (or service mark) as playing adjective to bank’s noun.

Why does the strength of a trademark matter?

Other things being equal, the stronger a mark is, the more power it has to exclude similar marks, even when the similar mark is used on vastly different goods. You will never see a COCA-COLA automobile (unless it is manufactured by the Coca-Cola Company of Atlanta, GA, purveyors of the well-known carbonated beverage). There is also strength in family. The McDonald’s Corporation serves approximately 69 million customers McMUFFIN breakfast sandwiches, McRIB sandwiches, and McFLURRY desserts in McDONALD’S restaurants in 118 countries each day, and, in an effort to protect its interest in its “Mc” or “Mac” family, the McDonald’s Corporation would likely serve legal action on any restaurant owner trying to sell McLIVER dinners (the McDonald’s Corporation has filed at least 166 oppositions, or requests of extension of time to file oppositions, against marks containing the prefix “Mc” and “Mac” since 1973). That isn’t to say that the McDonald’s Corporation will always be successful in trying to prevent others from using the prefix “Mc” or “Mac” on goods or services in or outside of the food service realm, but a business person must consider the company’s palate for the expense of legal action should a desired mark have the potential to draw the ire of a formidable trademark owner.

Let us consider the strength levels of trademarks going from weakest (level no. 1) to strongest (level no. 4).

Level No. 1 – Descriptive

The human being is a paradox in trademark matters, as in all matters. “Descriptive” marks are the weakest (and thus most easily imitated/infringed), and yet most first-time trademark selectors pick a descriptive mark “because I want people to know what I’m selling.” Of course this makes sense. But the question is, do you want your trouble now (getting people to associate your non-descriptive trademark with your product) or later (fending off all the competitors who lawfully adopt similar descriptive marks)? FASHIONKNIT let buyers know the product was chic (FASHION) sweaters (KNIT); then along came FASHIONIT for, yes, chic sweaters. MILLER LITE tastes great and is less filling, but so is BUD LIGHT. SEXY for skimpy lingerie is certainly descriptive, so it probably has to co-exist with SEXY for hair-care products.

Level No. 2 – Suggestive

The “suggestive” mark does not describe the product; rather, it requires, as one court put it, a mental leap from the mark to the product. Examples: GREYHOUND for bus transportation services; GUNG-HO for toy action figures; ROACH MOTEL for insect traps.

Big picture: because GREYHOUND is suggestive, the bus company could stop GREYHOUND airlines. If the bus company had adopted FASTRIP, it would probably have to endure an unrelated airline with that same name.

But of course

The line between weak “descriptive” and stronger “suggestive” marks can be difficult to draw. Is 5 MINUTE for epoxy glue descriptive or suggestive? How about EVEREADY for batteries? CHICKEN OF THE SEA for tuna fish? You may want to pick the mind of other trademark connoisseurs, including your local trademark attorney, before putting your selected flavor on the company’s menu.

Level No. 3 – Arbitrary

An “arbitrary” mark is a dictionary word in use in everyday language that neither suggests nor describes anything about the product or service. An APPLE a day keeps the doctor away, but it has nothing to do with computers or other digital devices; elephants grow tusks of IVORY but not soap bars or flakes; the STORK CLUB was where many two-legged creatures went to see and be seen, but no stork was ever seen on the premises.

But like the “descriptive”/“suggestive” divide, the “suggestive”/“arbitrary” divide can be elusive. Is GREYHOUND relatively stronger because it’s arbitrary (what does a skinny dog have to do with an inter-city bus?) or relatively weaker because it’s only suggestive (of aerodynamic design and speed)?

Level No. 4 – Fanciful or coined

Someone invented, or dreamed up in her fancy, a “fanciful or coined” mark. This is the 800-pound gorilla that can keep every other animal out of the jungle. There is no need to append the product species for you to recognize them: CLOROX, KODAK, EXXON, POLAROID, and VIAGRA (all so far still with us as trademarks); as well as ZIPPER, ESCALATOR, THERMOS, CELLOPHANE, and ASPIRIN (meteoric successes for all as trademarks, now fallen to Earth as nouns in the public domain). A business person that is successful in getting the public to associate a fanciful or coined mark with a product up-front will likely reap the rewards of the brand recognition it attains over the course of time, sometimes even gaining recognition and protectability outside of the company’s original goods and services.

Coda

One way to make a lasting (though it may be anonymous) contribution to civilization is to coin a fanciful trademark that becomes a proper noun in the public domain of everyday language.

But even if the primary concern is simply making money, there is still good reason to choose a mark that is suggestive, arbitrary, or fanciful/coined. Marks in these categories are considered inherently distinctive and become protectable trademarks as soon as they go into use. On the other hand, if your mark is descriptive, then in order to register it as a trademark or to prevail on a complaint for trademark infringement, you need to establish by evidence—often in the form of expensive market surveys—that your mark has acquired distinctiveness or secondary meaning. Acquired distinctiveness or secondary meaning means that the consumer first thinks of the common meaning of the word or words in your mark but then automatically thinks of their “secondary meaning,” which identifies you as the source.

Examples of secondary meaning

Well, it’s almost winter and you probably have a headache from all this: time to put some CHAPSTICK lip balm on your lips and go home and take a couple of BUFFERIN buffered aspirin (and when you feel better, have some BEER NUTS salted nuts!).

In our next article, we will discuss further issues related to the selection of a mark, including the selection of standard character versus logo marks, cross-departmental approaches to mark selection, and first steps to take once a candidate mark has been selected.

This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617.439.2000.

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.