Nov 27 | 2018

Dunner Law Trademarks 101: What is a Trademark?

Trademarks can be a variety of things, such as words, names, phrases, symbols or designs, and even sounds. Trademarks have a dual purpose, helping businesses distinguish their products in the market, and in turn, helping consumers identify the source and quality of those products. Historically, the practice of marking goods to delineate origin and quality can be traced back to ancient Egypt and China and continuing throughout the Middle Ages. Even though the practice of using trademarks is well established, the concept that a trademark could be legally protectable was not introduced until the nineteenth century.

An important characteristic of a trademark is that it is used consistently without variation in connection with the same goods or services to identify the product or service and distinguish the owner in the marketplace. This continuity promotes both consumer association of the mark with the goods or services, as well as consumer recognition in the marketplace.  When one encounters NIKE® products, for example, athletic shoes or athletic wear is probably the first thing that comes to mind.  Also, the Nike brand has a certain quality of goods associated with it, which makes it such a valuable selling tool for the company as well as a valuable indicator of quality for consumers.

What’s in a (trademark) name?

There are endless possibilities for trademarks, although some are stronger than others. Trademark strength is measured by its level of distinctiveness in the marketplace. The strongest trademarks are fanciful or arbitrary words, and they are considered “inherently distinctive.”  Fanciful or arbitrary marks are words that have no association with the goods or services to which they are applied.   GOOGLE®, KODAK®, and  APPLE® are good examples of inherently distinctive marks.   Generally, these marks are easier to protect due to their high degree of distinctiveness (it typically is obvious when an infringer attempts to knock off an arbitrary mark).

Just below arbitrary marks in terms of strength are suggestive marks.  Suggestive marks are words or phrases that suggest some quality, characteristic, or purpose of the product or service without directly describing the goods or services being sold. In other words, suggestive marks require some “imagination, thought and perception” for the consumer to determine the nature of the product or service underlying the mark. GREYHOUND® is a well-known example of a suggestive mark. By naming a bus company after the fastest breed of dog, GREYHOUND® implies that its transportation services will be just as swift. A couple of other trademarks that utilize this type of suggestive association are MUSTANG® and JAGUAR®.

Any trademark that is not considered arbitrary or suggestive is not “inherently distinctive” in terms of trademark strength.  These less strong marks are considered “descriptive” trademarks, as they merely describe the underlying goods or services.  In other words, they convey an immediate sense of the ingredients, qualities, or characteristics of the product or service that they represent.  Descriptive marks must “acquire” distinctiveness over time in order to build up consumer recognition.  Well-known examples of descriptive marks are BANK OF AMERICA® and AMERICA ONLINE®. While descriptive marks can function as effective marks, they must be used substantially and continuously so that they ultimately will be recognizable to consumers.

Words that convey precisely the good or service that they represent are considered generic, and they can never function as trademarks. That is because the law is written to promote competition, not create monopolies on common words that every business should be able to use.  So, no person or business can create exclusive rights in generic words, like attempt to monopolize and exclude others from using “The Flower Shop” as the name for a flower store.

Trademark strength is important to consider when choosing a brand.  It not only will dictate ultimate consumer recognition, but strong trademarks are easier to enforce against competitors that are keen to copy your brand and take advantage of the goodwill you have worked so hard to build up in your business.

By Cassidy J. Grunninger, Esq.