Strong trademarks vs weak trademarks

Author: John A. Leonard

Registration does not guarantee protection. Some marks are deemed “strong” while others are deemed “weak”. Strong marks are afforded the greatest protection.
As a general rule, arbitrary and fanciful or suggestive marks are considered strong. Descriptive, geographic and personal name marks are considered weak. “Generic” marks are afforded no protection. Generic terms are words we use in everyday speech, such as chair, desk, car, etc. No one has the exclusive right to use generic terms.

B. Fanciful, Arbitrary and Suggestive Marks – The “Strong Marks”
FANCIFUL MARKS consist of coined words that have been invented or selected for the sole purpose of functioning as a trademark. Such marks comprise words that are either totally unknown in the language or are completely out of common usage at the time, as with obsolete or scientific terms. Fanciful marks are referred to as the strongest of all marks. Being a strong mark has significance in that the mark will then be given an extensive scope of judicial protection into different product or geographical markets.
Although fanciful marks receive the strongest judicial protection, they are often unacceptable from a business and merchandising point of view. Any good marketing person will tell you that the mark should help “sell” the product by telling the buyer something about the product or service offered. Unfortunately, descriptive marks are more difficult to protect as trademarks. Further, descriptive marks may be already in considerable use in closely related product fields. In this sense, they are “weak” marks because they are in a crowded market of similar marks.
Examples of fanciful marks include the following:
Clorox bleach
Q-Tex cuticle-removing liquid
Kodak photographic supplies
Polaroid photographic supplies
Exxon gasoline
Yuban coffee
Sanka coffee
Xerox photocopying equipment

ARBITRARY MARKS are closely related to fanciful marks in that they are also “strong”. Arbitrary marks comprise those words, symbols, pictures, etc. that are in common linguistic use but which, when used with the goods or services in issue, neither suggest nor describe any ingredient, quality or characteristic of those goods or services. “Arbitrary” means that the ordinary meaning of the word mark is applied to goods in a totally arbitrary and non-descriptive sense. For example, Ivory soap is not made of ivory. Old Crow whiskey is not distilled from old crows.
Examples of arbitrary marks include the following:
Black and White scotch whiskey
Horizon banking services
Jelli Beans roller skating rink
Mustang motel
Nova television series
Sun bank
Sun computer hardware and software
Camel cigarettes
Rainbow bread
Shell gasoline
Arm and Hammer baking soda
Apple computers

Note that none of these words conjure up any mental reaction that is connected with the product at all. That is, the words used in the mark do not in any way describe anything about the product at all. The juxtaposition of the mark and the product is purely “arbitrary”.
SUGGESTIVE MARKS “suggest”, but do not describe particular goods or services. Distinguishing between suggestive marks and descriptive marks is sometimes difficult.
Examples of suggestive marks include the following:
Action slacks – pants
At-a-Glance – calendars
Chicken of the Sea – tuna fish
Citibank – urban bank
Handi-Wipes – dusting cloths
Hula-Hoop – plastic hoops
Orange Crush – orange drinks
Playboy – magazine
Q-tips – wooden sticks with a cotton end
Roach Motel – insect trap
Tail-Wagger – dog food
Wireless Now! – on-line information services
Wrangler – western boots and jeans

C. Descriptive, Geographic and Names – the “Weak Marks”
Descriptive marks describe particular goods or services. Fanciful, arbitrary and, as discussed above, suggestive marks are given legal protection immediately upon adoption and use and do not require secondary meaning. Marks that are descriptive, geographic, or personal, corporate business or professional names all require “secondary meaning” in order to be protected by the courts, even if registered. As a general rule, secondary meaning exists when the public associates the product with a single source. Secondary meaning is established by the following evidence:
Direct Evidence
1. Direct consumer testimony
2. Customer surveys
Circumstantial Evidence
1. Exclusivity, length and manner of use
2. Amount and manner of advertising
3. Amount of sales and number of customers
4. Established place in the market

Names that are considered descriptive are the following:
Bed & Bath – store for items for the bedroom and bathroom
Beef and Brew – restaurants
ChapStick – skin preparation in a stick
FirstBank – banking services
Holiday Inn – motel
Intelligent Modem – modem
Mustang – trailers
Raisin-Bran – raisin and bran cereal
Tender Vittles – cat food
Vision Center – optical clinic
World Book – encyclopedia
D. Generic Marks – No Protection
Generic names are words that are either part of our everyday speech or have started out as trademarks, were not protected, and have evolved into generic terms. This is why some companies spend so much energy protecting their trademarks. Kleenex, Q-Tips and Coke all fight vigorously to insure their names do not become generic for facial tissues, cotton swabs and soft drinks.
The following marks have been held to be generic and unprotectable as trademarks:
All News Channel – television broadcasts
Aspirin – acetyl salicylic acid
Baby Oil – mineral oil
Cellophane – transparent cellulose sheets and films
Cola – type of soft drink
DOS – type of computer operating system
Escalator – moving stairway
Light Beer – beer light in body and taste
Matchbox – toy cars in matchbox-sized boxes

This Article is published for general information, not to provide specific legal advice. The application of any matter discussed in this article to anyone’s particular situation requires knowledge and analysis of the specific facts involved.
Copyright © 2014 Fairfield and Woods, P.C.,ALL RIGHTS RESERVED.
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