Trademark Strength: Why Names Matter
June 17, 2017
In William Shakespeare’s play, Romeo and Juliet, the character Juliet declares to her lover, Romeo,“What’s in a name? That which we call a rose by any other name would smell as sweet.” Juliet, of Capulet familial, asserts that it doesn’t matter that Romeo is a rival Montague. Not to quibble with young love and Shakespeare, but names do indeed matter, particularly in relation to trademarks.
A trademark or service mark is a symbol, word or words legally registered or established by use to represent a company or product. Ultimately, the strength or weakness of a trademark affects how it potentially can be protected. A strong mark clearly identifies and distinguishes the goods or services of one provider from other providers. A weak mark is not distinguishable, and may already be used by differing products and services, possibly leading to confusion.
Trademarks are categorized according to their legal strength. From most distinctive to least distinctive, the categories are 1) fanciful or coined; 2) arbitrary; 3) suggestive; 4) descriptive; and 5) generic.
A fanciful or coined mark is considered the strongest type of trademark. A fanciful mark is a combination of letters that upon creation has no meaning in language; it is invented for the purpose of identifying and distinguishing products or services. Examples include EXXON, KODAK and XEROX. Over time, through use and exposure, a fanciful mark achieves meaning and recognition by the public. Generally, due to the distinctive nature of fanciful or coined marks, these receive the broadest legal protection against third-party use.
An arbitrary mark consists of a word or words that have meaning in language, but are associated with products or services that are unrelated. Examples include APPLE and SUN computers. Arbitrary marks are considered highly distinctive, but because they are arbitrary—more random than reason—association of the mark with a product or service must be developed.
A suggestive mark evokes the quality, nature or characteristic of products or services. Suggestive marks, while common, are powerful because they create a simple connection between a name and a product or service. Examples include PLAYBOY, COPPERTONE, 7-ELEVEN, and MUSTANG. Suggestive marks are appealing, but often entitled to less protection than fanciful or arbitrary marks.
What is considered a descriptive mark is not usually a registerable trademark or service mark because it merely describes goods or services; it does not serve to distinguish the source of the goods and services. Examples of descriptive marks include geographic names, or phrases such as “rich and creamy” to name ice cream. It is sometimes difficult to tell if a mark is suggestive or descriptive, but a rule of thumb is a suggestive mark requires thought and imagination to reach an understanding of the nature of the goods or service and a descriptive mark does not. A descriptive mark just describes an attribute of a product. Over time, a descriptive mark can become a protected trademark if the mark acquires secondary meaning, which means that in addition to primarily being understood as a description of the product, it is directly associated with the goods or service. Examples of descriptive words that become protectable trademark include SHARP (televisions) and WINDOWS (windowing software).
A generic word or words is the common name of a product or service; a generic word is not protectable and cannot function as a trademark. However, there are generic terms that were once trademarks—aspirin, thermos, laundromat and kerosene, for example—which have become common terms for goods or services as the result of extensive public and commercial use. The erosion of trademark strength is problematic for brand owners, and is an ongoing battle. One recent example of a brand owner’s fight against genericide is Google, Inc.’s skirmish with David Elliot and Chris Gillespie. In Elliot vs. Google, Inc., the plaintiffs argued that Google trademarks are generic because most people use “google” as a verb: to google is to use any Internet search engine without specific consideration to the company Google or its trademarks. The plaintiffs sought cancellation of the company’s Google trademarks under 15 USC §1064(3) on the claim of genericide. Previously, the U.S. District Court for the District of Arizona held that, even though the public uses “google” as a verb (meaning using any Internet search engine), Google is a valid trademark because the primary significance of the mark is the company’s Internet search engine. The decision was appealed, and May 17, 2017, the Court of Appeals for the Ninth Circuit affirmed the judgment. The Google name is not a generic trademark in spite of its colloquial use as a verb.
Which brings us back to Juliet’s question, “What’s in a name?” Trademarks, in essence, are names that envelop the distinguishing characteristics of products or services, and they relay significance and meaning of those products and services through language and images in powerful and memorable ways. That’s the point of a trademark. So it stands to reason that if we call a trademark by any other name—allow the dilution of a mark’s strength— it will certainly not smell as sweet.