Distinctiveness: Module 3 of 5

 

Now that we’ve covered the basics of trademarks under federal and state law, we will turn to the nuances of what may be protected. In this module, we’ll cover the requirement of “distinctiveness” for something to be covered by trademark protection.   

 

Levels of Distinctiveness 

To be eligible for federal trademark registration, a mark must have a certain level of distinctiveness. The degree of distinctiveness runs along a continuum, generally categorized into one of five groups.  The first level includes generic terms, which are considered the least distinctive and the least deserving of trademark protection.  Second, are descriptive terms.  Third, are suggestive terms.  Fourth, are arbitrary terms. Finally, the fifth level is fanciful terms, which are considered the most distinctive and the most deserving of trademark protection.[1]

A generic term is one that the public understands as a common name for the company’s goods or services.[2]  Generic terms cannot be registered on either the Principal or Supplemental Register.  For example, a company could not register the term watch for its timepieces, or the term automobile for its cars, or the term popcorn for its snack products.  The trademark examiner can obtain evidence of the public’s understanding of the term from any competent source, including dictionaries, online databases, newspapers and other publications.[3]  Based on these sources, for example, an examiner determined that churrascos was a generic term for restaurant services.[4]

A mark is considered descriptive if it conveys an immediate idea of an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services.[5]  Descriptive terms are generally not eligible for trademark registration unless they have acquired secondary meanings.  Examples of descriptive terms include sharp for televisions, international business machines for computers, and cold and creamy for ice cream.[6]  The determination of whether a mark is descriptive must be made in conjunction with the specific good or service and the significance that the mark would have to the average purchaser.[7]

Suggestive marks are those that “require imagination, thought or perception to reach a conclusion” as to the nature of the product.[8]  For example, the mark term noburst for liquid antifreeze was determined to suggest the desired result of using the product rather than immediately informing the public of an attribute of the product.[9]  Examples of other suggestive marks include airbus for airplanes and jaguar for cars.[10]  Suggestive marks are considered “inherently distinctive” and can be registered.[11]

Arbitrary marks include words that are in common use, but that are not typically used to describe a significant ingredient, quality or characteristic of the product.  In other words, arbitrary marks use common terms in an unexpected manner.  For example, the mark veuve -- which is French for widow -- was found to be an arbitrary term as applied to champagne.[12]  Other examples of arbitrary marks include apple for computers and old crow for whiskey.[13]  Arbitrary marks are also considered inherently distinctive and can be registered.[14]

Fanciful marks are terms that have been invented for the sole purpose of functioning as a trademark.  Examples of fanciful marks include Exxon for gasoline and Pepsi for beverages.[15]  Fanciful marks are considered the most distinctive and, thus, the worthiest of trademark protection.[16]

 

Applications of Distinctiveness

Sometimes it is difficult to correctly classify the level of distinctiveness for a certain term.  A term that falls into one category of distinctiveness for a certain product might fall into a different category for a different product.  Moreover, based on usage over time, a mark might shift into a different category.

It can also be difficult to categorize the level of distinctiveness of certain terms.  The most difficult determination often involves terms that are on the borderline between suggestive and descriptive.  The determination is important, because suggestive terms can inherently be registered, whereas descriptive terms require analysis before they can be registered.

For example, the Trademark Office initially refused to register the term dotblog in conjunction with internet service, finding that the term was merely descriptive of a website log or blog. The appellate court reversed the decision, concluding that the mark was suggestive.[17]  According to the court, dotblog is not descriptive because it does not immediately convey knowledge of a quality, feature, function or characteristic of the goods or services with which it is used.

Incongruity is one of the accepted bases for determining that a mark is suggestive rather than descriptive.[18]  For example, the Trademark Office determined that frankwurst was suggestive.[19]  Although frank is synonymous with hot dog, and wurst is synonymous with sausage, the combination of the terms was found to be incongruous.  Another example is the mark mouse house for museum services featuring mice figurines made to look like humans.[20]  The Trademark Office found this usage incongruous with the more likely meaning of mouse house -- a building in which mice are housed or displayed.

Another difficult distinction involves whether a term is descriptive or generic.  The distinction is important because descriptive terms can eventually be registered if they acquire secondary meanings.  Generic terms cannot be registered under any circumstances.[21] 

For example, the Trademark Office decided that the term buyautoparts was merely generic when applied to a website selling automotive parts.[22]  The term was found to be generic because the relevant consumers would understand that the term generally applies to the entire category of automotive part retailers. 

As another example, the term bundt was found to be generic for a type of ring cake mix, based on cookbooks and food-related news articles.[23]  In contrast, the term corn thins was found to be descriptive of corn cakes, and rice thins to be descriptive of rice cakes.[24]  The appellate court upheld the Trademark Office’s decision, because corn and rice described the ingredients, and thins described the physical characteristics of the snacks.

 

Inherent and Acquired Distinctiveness

Fanciful, arbitrary, and suggestive marks are often referred to as “inherently distinctive.”  Such marks can be registered. Generic and descriptive terms are not typically eligible for trademark protection.  However, such terms can be protected by a trademark registration if they have become distinctive by achieving what is known as a secondary meaning.  For example, sharp is merely a descriptive term for televisions, but it has achieved a secondary meaning through long use, advertising and publicity.[25]  Likewise, the phrase International Business Machines is merely a descriptive term for some computers, but IBM was able to register the trademark after the term had achieved a secondary meaning. 

A determination of secondary meaning requires that the primary significance of the term in the minds of the consuming public is not the product, but the producer.[26]  The public must associate the goods with a single source, even if the source is anonymous.  For example, the descriptive term coppertone was found to have acquired a secondary meaning.[27]  The general public understood that coppertone suntan lotion was made by a single producer, even if the public did not know that Douglas Laboratories was that producer.  In contrast, Kellogg’s was not able to register a trademark for the term shredded wheat, despite exclusive use for over 30 years and over $17 million in advertising.[28]  The court found that the consuming public associated shredded wheat primarily with the product and not with Kellogg’s cereal product.

Evidence that is typically used to establish secondary meaning includes prior registrations of the same mark for similar goods or services, verified statements that the mark has exclusively and continuously been used with the goods or services for at least five years and large-scale advertising expenditures.[29]  However, as Kellogg’s learned, even long-term use and significant advertising expenses do not necessarily mean that a descriptive term has acquired a secondary meaning.   

Other evidence of secondary meaning may include surveys, market research and customer reaction studies.[30]  The surveys must show that consumers view the proposed mark as an indication of the source of the particular product.[31]  Although every case is evaluated on its own merits, courts have held that survey results showing less than 10% customer recognition are insufficient to establish secondary meaning, and results over 50% are typically sufficient.[32]  It is often difficult to develop a statistically-accurate customer survey, and courts often dismiss survey results due to flaws in questions or in selecting the appropriate survey group.[33]  Regardless, surveys and market research remain vital evidence of secondary meaning in many trademark cases.

 

Mis-Descriptive Terms

As we’ve discussed, trademark law prohibits the registration of terms that are merely descriptive, such as cold and creamy for ice cream.  Trademark law also prohibits registration of terms that are deceptively mis-descriptive.[34]  A mis-descriptive term is one that conveys an immediate idea of an ingredient, quality, characteristic, function or feature of a product, but where the implied or conveyed idea is false.[35]  For the Trademark Office to refuse registration, the mis-description must be deceptive, meaning that consumers are likely to believe the mis-description.  An example of a deceptively mis-descriptive mark is the term organik (ending with a K), when used on clothing made from non-organic materials.[36]  The Trademark Trial and Appeal Board found that prospective purchasers were likely to believe that goods identified by this mark were 100% cotton that is either from an organically grown plant or that had not been chemically-treated.  The Board further found that this mistaken belief was likely to affect the decision to purchase among a significant number of prospective purchasers.

However, as with generic descriptions, even mis-descriptive marks that have acquired a secondary meaning can be registered.[37]  In addition, marks that contain appropriately registrable matter in addition to deceptively mis-descriptive components can be registered with a disclaimer of the deceptive component.[38]  A disclaimer is a statement that the trademark applicant does not claim exclusive rights to the unregistrable portion of the mark.[39] For example, if the maker of organik clothing put a disclaimer on its advertising that said something like “organik clothing is not made from materials that would normally qualify as organic,” it would have had a better case for registration.

 

Geographically Descriptive Terms

Next, an owner cannot typically register a term that is primarily geographically descriptive.[40]  For example, while a pizza shop may certainly describe its product as being “New York pizza,” it cannot trademark that phrase, because it is merely descriptive of a geographic origin or style.

The focus is on the word “primarily.”  The Trademark Office employs a three-step test for refusal to register a geographically descriptive mark.[41]  First, the primary significance of the mark must be a generally known geographic location.  A mark is not primarily geographic where the geographic meaning is minor, obscure, remote or unconnected with the goods or services.[42]  Second, the goods or services must originate from that location.  Third, purchasers must be likely to believe that the goods or services originate from that location.  Based on this test, the Trademark Office has rejected registration of Yosemite beer[43] and Carolina apparel.[44]

In the Yosemite beer case, the Trademark Office considered a beer that was produced and sold in a brewpub in Merced, California, which is approximately 80 miles from Yosemite.  The Office determined that the primary significance of the Yosemite beer mark was Yosemite, which is the shorthand term for an internationally-recognized geographic location, Yosemite National Park.  The Trademark Office also determined that Merced was close enough to Yosemite, and that Merced was sufficiently affiliated with Yosemite, to satisfy the second part of the test.  Finally, the Office determined that consumers would reasonably believe that the beer came from or near Yosemite. As such, the term was considered geographically descriptive and thus ineligible for registration.

Similarly, an owner cannot register a geographically deceptively mis-descriptive mark.[45]  This includes terms used with goods or services that do not originate from the place identified in the mark, but when consumers believe that they do and buy the products as a result.  For example, the Trademark Office rejected Venezia-Milano for women’s clothing made in China, because consumers would likely believe that the product originated from Italy.[46]  Similarly, the Venice collection was held to be geographically deceptively mis-descriptive of goods that did not originate from Venice[47], and Havana select was geographically deceptively mis-descriptive of rum that did not originate from Cuba.[48]

Similar to other descriptive marks, if a geographically descriptive mark has acquired secondary meaning, it can be registered as a trademark.  But remember that geographically deceptively mis-descriptive marks are not eligible for any trademark protection, even if they have acquired a secondary meaning.[49] So, for example, Samuel Adams Boston Lager can be trademarked because it was created and is brewed in Boston and has acquired a distinct secondary meaning.[50] But the phrase would not be eligible for trademark protection if the beer were founded and brewed in, say, Denver.

Another exception is that indications of regional origin are eligible for registration as certification marks.[51]  A geographic certification mark is a term used to certify that the goods or services originate in the geographical region identified by the term.[52]  For example, Parmigiano Reggiano is a certification mark that designates cheese from a specific region in Italy.[53]  

 

Surnames

A term that is primarily merely a surname (as in “Williamson’s grits” to describe grits sold by a person named Williamson) cannot be registered unless it has acquired a secondary meaning.[54]  The test for whether it is primarily merely a surname depends on the significance of the term to consumers. In making this determination, telephone directories, online databases and the U.S. census database can be used, including evidence that the surname is not in such sources.[55]  A court has found that evidence that a surname appeared in 21 telephone listings and 11 excerpts from a research database was insufficient to show that the mark was primarily merely a surname.[56]

Evidence of the fame of a mark is not typically relevant in determining whether the mark is primarily merely a surname.[57]  For example, the fact that McDonald’s was famous due to widespread promotion and advertising did not mean that McDonald was not primarily merely a surname.[58]  Of course, such evidence would be important to establish secondary meaning after the clearing the first hurdle. In other words, McDonald’s can be registered because it’s acquired an independent meaning but could not be registered merely because the product is run by someone named McDonald.

Rare surnames are more likely to receive trademark protection than common surnames.[59]  For example, the surname Sava was found sufficiently rare that it was not “primarily merely a surname.”[60]  However, even a rare surname may be considered primarily a surname if its primary significance to consumers is that of a surname.[61]  For this reason, the marks Darty, Rebo and Posten could not be registered.[62]  The same goes for rare surnames of famous personalities, such as Belushi.[63]

Still, if there is a commonly understood meaning of a term apart from its surname significance, then the surname can be trademarked.  Such terms can be registered if they have acquired secondary meaning.  For example, Bird and Hunt were entitled to trademark registration.[64]  Likewise, surnames that identify historical places or persons might not be considered primarily surnames.[65]  For example, the name Da Vinci was entitled to protection, because it primarily connoted a famous figure, Leonardo Da Vinci.[66] John Deere, of course, is also entitled to trademark protection even though it has the same name as the 19th century inventor who invented the steel plow.

In our next modules, we’ll focus on ensuring that there is no trademark infringement and look at trademark enforcement actions and remedies.

 

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