Understanding trademark strength and protectability in business

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It’s the rare business that does not adopt some form of a trademark so it can distinguish its goods or services from its competitors’. Think MONSTER energy drinks; VENTURE LAW PARTNERS, a law firm. Some marks are protectable, and some marks are not. Good intentions don’t count.

To have any value to its owners, and to be meaningful to help consumers better select goods and services, the mark must be protectable from infringers. To be protectable, a mark has to be distinctive of the owner’s goods and services and be known to an appreciable number of consumers and potential consumers. The first criteria involves the selection of the mark and the second involves use of the mark in practice.

Not all trademarks or service marks are distinctive and protectable, but as a general rule, strong marks will be protected and weak marks will not be. There are two types of strengths when considering trademarks. The first is conceptual strength, and the second is commercial strength. A lot of money and time can be wasted attempting to create exclusive rights in a mark that lacks either or both of these criteria.

In 1976, Judge Friendly divided trademarks into four categories. The case was Abercrombie & Fitch v. Hunting World, and involved two New York retailers who sold similar goods for safari use. 60 years later, the case is still heavily cited by courts and studied in law schools around the country. What Judge Friendly was describing was the conceptual strength of a trademark.

The judge recited the requirement that to serve as a trademark, the term must distinguish its owner’s goods or services from those of its competitors. Many trademarks do, but some do not presently, and others will never be capable of doing so. The judge arrayed four types of marks in ascending order of protection, which he wrote reflects their eligibility for trademark status and their degree of protection. The classes of marks he described are generic, descriptive, suggestive and arbitrary or fanciful.

A generic mark refers to the genus of which the particular product is a species. It asks and answers the question, “What is it?” “It’s an apple, it comes from a tree. It’s a fruit.” A generic mark can never serve as a trademark, but a term that might be generic can have two meanings. IVORY can be generic to describe products made from elephant tusks, but when used to describe IVORY, a soap that floats, it is arbitrary. Sometimes a mark that did not start off as generic becomes generic because of how it is used by the consuming public or by its owner. Aspirin and shredded wheat are examples, and these marks can never regain trademark status for their genus of species.

Descriptive marks describe the characteristics of a product. For example, NEVER MAR describes an attribute of a linoleum product, as does VENTURE LAW PARTNERS (although one could make the argument that the latter is generic). But with use and acceptance by consumers and potential consumers, descriptive marks are capable of moving from being “merely descriptive” to developing what is called ‘’secondary meaning,” being an association by consumers and would-be consumers with the product, or the source of the product. When that occurs, the mark becomes distinctive and it is protectable by its owner. Federal registration of a descriptive mark requires proof that the mark has obtained secondary meaning.

Yet even an unprotectable descriptive mark can have value because it can serve to immediately explain the claimed virtues to prospective customers without the need to engage in an expensive advertising campaign. My mark, EVER SHARP, may be unprotectable, but it immediately conveys an attribute to the consumer who may be looking for a kitchen knife that need not be sharpened.

A suggestive mark requires some imagination, but it is distinctive. It bridges a gap between a descriptive mark and one that is arbitrary or fanciful. POLAR BEAR used as a mark for a line of winter coats would be suggestive. Sometimes it can be very difficult to distinguish a suggestive mark from an arbitrary mark, but it dosen’t matter because both are distinctive and protectable.

Arbitrary marks adopt everyday words for dissimilar products. MONSTER energy drinks, APPLE computers, Chevrolet IMPALA cars, for example. These are strong marks. Fanciful marks are made up of words or use very obscure words. EXXON and POLAROID are examples. They are generally the most protectable marks on the spectrum. But even a conceptually strong mark may be left without protection if it is unknown to consumers.

How can a mark unfamiliar and unknown to the marketplace be confused with another mark? When a mark becomes aware to the marketplace, it is said to have developed commercial strength, and the test for determining commercial strength is very similar to the test that is applied to a descriptive mark to determine whether that mark has acquired secondary meaning.

The factors that a court will examine include length and manner of the use of the mark, volume of sales associated with the mark, the amount of money spent on advertising and promotion, whether the mark was the subject of unpaid stories in the media, consumer surveys and sometimes direct consumer testimony. Each of these factors is intended to measure strength in the marketplace and therefore consumer awareness of the mark’s use.

Marks that are conceptually and commercially strong are going to be protectable. Other marks not so much, if at all, although it is more important that the mark be conceptually strong. It pays to give serious thought to a mark before it is adopted because the mark may be used for a length of time before a challenge occurs, and if the use of the term as a trademark is successfully challenged and the mark is found not to be protectable, the owner may have to start all over again with a new mark.

Jim Astrachan is a counsel to Corey Tepe LLC and has taught intellectual property law in the two Maryland law schools since 1999.