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Legal Strength of Trademarks
Not all trademarks receive the same level of protection. Some marks may be
denied court protection altogether, while others may be granted only limited
registration and protection. However, even when a mark is capable of protection
by the courts, and can be registered on the Principle Register,
there still exists a continuum of protection available. The protection afforded
is directly linked to the legal strength of the trademark. Generally speaking,
trademarks with higher levels of protection permit the owner to enforce through
the court system their exclusive right to use their mark against a broader
variety of similar marks, for a broader variety of goods or services. Thus, when
you are selecting a mark, you will want to consider choosing one that will
provide the most legal strength for your business.
The following classification system for trademark strength is widely
recognized as distinguishing between the level of distinctiveness a mark can
obtain. Generally speaking, the more distinctive the mark, the stronger is the
protection available. This scheme was originally developed for the purpose of
classifying lingual marks, but has since been viewed as a model for trademark
protection in non-lingual marks as well. Nonetheless, the following definitions
continue to be cast largely in terms of lingual marks. Analogies to non-lingual
marks should be made whenever they fit.
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Coined Terms
Also referred to as "fanciful" words, these are terms that are invented
for the sole purpose of serving as trademarks. Examples include KODAK
for photographic equipment, UNIX for a computer operating system, REEBOK
for shoes, and XEROX for photocopying equipment. Coined marks receive
the highest level of protection, because a coined word has no known
meaning and therefore has no possible association with the good or
service for which it is used. As a result, infringers of these marks are
hard pressed to provide any plausible explanation for their use the
mark, leaving the impression that the real reason was in fact a blatant
attempt to trade off the goodwill generated by the owner of the
trademark.
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Arbitrary Terms
These are names that exist in popular vocabulary, but have no logical
relationship to the goods or services for which they are used. The
pairing of the mark with the particular category of goods or services
should appear to be random. Examples include APPLE for computer,
BEEFEATER for gin, COMET for kitchen cleaner, and JAGUAR for a car.
Whether a word is arbitrary or not has everything to do with the context
in which it is used. Obviously, the term "apple" used to sell the
rounded edible pome fruit of a tree of the rose family is a generic
term, and not trademarkable. Similarly, use of the phrase "Comet Watch"
for a newsletter describing the activities of celestial bodies with long
tails pointing away from the sun would not be considered arbitrary, but
rather suggestive. More
examples |
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Suggestive Terms
Suggestive trademarks suggest rather than describe qualities of
the underlying good or service. "Suggestive" and "descriptive" are not
mutually exclusive, since there must be some description in almost any
suggestion. However, by going beyond "mere description" the law elevates
a suggestive term into the valuable category of "inherrently
distinctive." Courts have clarified this fine distinction by stating a
mark is suggestive if it requires imagination, thought and perception to
determine the nature of goods or services in question. Examples of
suggesitve marks include: ACOUSTIC RESEARCH for
stereo loudspeakers, HABITAT for home furnishings, GREYHOUND for bus
transportation services, and Q-TIPS for cotton-tipped swabs. More
examples |
Trademarks above this line are
inherrently distinctive
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Descriptive Terms
Trademarks that describe the ingredients, qualities,
features, purpose or characteristics of a product or service. These
marks are not inherently distinctive, and thus do not receive trademark
protection unless they acquire distinctiveness through secondary meaning. Even if they
qualify for trademark protection, descriptive marks are the weakest
marks possible, and do not receive as broad of legal protection as suggestive, arbitrary and fanciful marks. Examples of descriptive marks include: BEEF & BREW for a restaurant, LASERGAGE for a laser
measurement device, PIZZAZZ for pizza, and WORLD BOOK for encyclopedias. In contrast to suggestive marks, a mark that is merely
descriptive immediately conveys knowledge of ingredients, qualities, or
characteristics with no imaginative leap required. If a composite mark
is not 100% descriptive, then the mark as a whole is not "merely
descriptive." More examples |
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Generic Terms
These are words or symbols that describe the product or service itself
as a category, rather than distinguish between competing versions of the
product or service. For example, "shredded wheat" is a generic term that
refers to the category of breakfast cereals that are composed of layers
of crunchy wheat strips molded together into a pillow-type shape. This
cereal may be manufactured by Kellogg's, Post or others., and each
manufacturer is free to use the term "shredded wheat" to advertise their
version of the cereal. To prevent them from using "shredded wheat" would
mean they could not equally compete with regard to this product. Thus,
generic words are not protected as trademarks precisely because to do so
would be akin to granting a monopoly in the product itself, not in a
word or symbol. More examples |
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Examples of
Arbitrary Marks:
AJAX for cleanser
ARROW for shirts
BANANA REPUBLIC for clothes
BEEFEATER for gin
CAMEL for cigarettes
CONGRESS for spring water
DOMINO for surgar
DOUBLE RAINBOW for Ice Cream
GUESS? for jeans
HANG TEN for clothes
HARD ROCK cafe
HORIZON for banking services
ICE CREAM for chewing gum
IVORY for soap
JELLIBEANS for a skating rink
NOVA for a TV series
PENGUIN for books
SHELL for gasoline
TEA ROSE for flour
Examples of
Suggestive Marks:
7-ELEVEN for convenience stores
ACCURIDE for tires
AT A GLANCE for calendars
BAC-A-BELT for belt-backing materials
BRIM for coffee
CHICKEN OF THE SEA for tuna fish
CITIBANK for an urban-based bank
COMPUGRAPHIC for typesetting machinary
COPPERTONE for tanning lotion
CYCLONE for wire fence
ESPRIT for casual clothing
FLORIDA TAN for suntan lotion
GLACIER for ice
HEARTWISE for low cholesteral foods
HULAHOOP for plastic toy hoops
LEKTRONIC for electric shavers
LIQUID PAPER for correcting fluid
LOC-TOP for bottle closure caps
MATERNALLY YOURS for maternal clothing
PHYSICIANS FORMULA for skin creams and lotions
RAPID-SHAVE for shaving cream
ROACH MOTEL for an insect trap
SPRAY'N VAC for an aerosol rug cleaner
SUAVE for shampoo
SWEETARTS for candy
VERBATIM for computer diskettes
WEAREVER for cookware
WORDPERFECT for a word-processing computer software
WRANGLER for western style jeans and boots
Examples of
Descriptive Marks
AFTER TAN for after sun-bathing lotion
ARTHRITICARE for a treatment substance for arthritis
AMERICA'S BEST POPCORN! for popcorn
BEEF & BREW for a restaurant
BUFFERIN for buffered aspirin
CAR FRESHENER for an air deodorizer for cars
COZY WARM ENERGY SAVERS for pajamas
EASYLOAD for tape recorders
FASHIONKNIT for sweaters
FOOD WORLD for a food industry publication
FOOD FAIR for a supermarket
FORUM for business training seminars
HERITAGE for life insurance plans
HOME SAVINGS for banking services
INTELLIGENT MODEM for a modem
INTERNATIONAL for maps and globes
LASERGAGE for a laser measurement device
LIGHTS for low-nicotine, low-tar cigarettes
NATURE'S MEDICINE for food supplements
NEVA-WET for a water repellant treatment
OPEN MRI for open-sided magnetic resonance imaging machines
PENTOMINO for a domino with five squares
PERSONAL FINANCE for a financial investment publication
PIZZAZZ for pizza
RICH 'N CHIPS for chocolate chip cookies
SECURITY CENTER for a storage facility
SPEX for optician services
SUDSY for ammonia
TENDER VITTLES for cat food
WORLD BOOK for encyclopedias
Examples of Generic
Marks
ALL NEWS CHANNEL for broadcasting
services
BAG RACK for a golf bag support device
BLINDED VETERANS for an organization for blinded veterans
CALL FORWARDING for a telephone call forwarding service
CLIPPER for sailing ship cruises
CONSUMER ELECTRONICS MONTHLY for a magazine on consumer
electronics
DISCOUNT MUFFLERS for car muffler repair and replacement services
DOS for a computer operating system
ICE PAK for an ice substitute
IMPORTED AUTO PARTS for a business selling imported auto parts
MULTISTATE BAR EXAMINATION for a bar examination given in
multiple states
PRIMAL THERAPY for a type of psychotherapy
PROM for for computer programmable read only memory
SHREDDED WHEAT for breakfast cereal
SUPER GLUE for an adhesive
YELLOW PAGES for a business telephone directory
BUT THESE WERE FOUND NOT GENERIC:
APPLE RAISIN CRISP for breakfast cereal
BEER NUTS for flavored nuts
CALIFORNIA COOLER for a wine, fruit juice and sparkling wine
beverage (a "cooler")
DICTAPHONE for a dictating machine
FIRST FEDERAL for savings and loan services
KEEN KUTTER for razors, knives, saws and hatchets
HONEY BAKED HAM for honey glazed hams
LEVI'S for denim jeans
PARK 'N FLY for airport parking areas offering bus service to and
from the terminal
POLY PITCHER for a polyethylene pitcher
RENTAL GUIDE for a real estate listing magazine
THE UNCOLA for non-cola soft drinks
TOUCHLESS for car wash services
TRIVIAL PURSUIT for a game based on trivia questions
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