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Trademarks need inherent distinctiveness or secondary meaning

News and Notes Focused on the 3 Public Faces of IP Law

  • Brand Image Protection - Trademark Law
  • Visual Image Protection - Copyright Law
  • Personal Image Protection - Right of Publicity Law

The Image Protection Law blog has been created in order to share stories and information on the legal aspects of: 1) the marketplace reputation of a company or product captured in its trademark, 2) published or publicly-displayed artwork, photography, and any created visual design, and 3) use of a person's photograph or likeness for product promotion or other commercial purposes.

The "IP3" share at least one thing in common: Image is everything. In these posts let's look at what that means in the realm of intellectual property in the news, but let's also be prepared to explore if there's something more beyond "everything." Don't forget, the intellectual in "intellectual property" doesn't mean smart or brainy, although by nature true creators often are. The word is used to refer to any creation, i.e., a "product of the mind." While this blog will be regularly updated, you are encouraged to share your thoughts on these posts.

At our law firm, we represent people in a wide variety of legal matters related to the protection of branding through trademarks and service marks. A trademark is a distinctive word, name, phrase, logo, symbol or even a "device" like a sound, scent, motion or color that serves to identify the source of the product, good or service. 

A generic term cannot be trademarked. For example, an auto-parts maker could not trademark "tire." Rather, to be eligible for federal protection, an appropriate trademark must be distinctive, either automatically by its nature or by acquiring secondary meaning.

Inherently distinctive trademarks 

Certain kinds of trademarks are presumptively inherently distinctive by their nature (listed from most to least protectable): fanciful, arbitrary and suggestive. Inherently distinctive marks are protectable just by their use in association with a product or service. 

Fanciful marks use words that are otherwise meaningless. They are created, coined or made up -- or are very obscure -- used just for the purpose of being trademarked brands. Examples include Clorox, FedEx and Kodak. 

Arbitrary trademarks are those that use real, familiar words, but in association with products not connected with the words' real meaning -- think of using Google for Internet search services, or Gap for clothing. 

Suggestive marks use words may hint at an aspect of the product without explicitly describing it. An example is Aleve (perhaps suggesting the alleviation of pain). 

Descriptive trademarks need secondary meaning 

Descriptive marks describe the product or service in some way but are not inherently distinctive, and they are not initially protectable. To be descriptive, the mark "need only describe a single, significant quality or feature of the goods or services," according to McCarthy on Trademarks and Unfair Competition. 

McCarthy cites these examples of trademarks that courts have held are descriptive: Bed & Bath, Holiday Inn, Madison's Progressive Talk, Pudding Treats, Real News and Tender Vittles (pet food). 

To be protectable, the potential trademark owner of a descriptive mark must show that through its sufficiently extensive commercial use the mark has achieved "secondary meaning" as recognized by a substantial part of the marketplace in which consumers have come to associate the mark with one source. 

Descriptive marks are the least protectable type because others could exploit them during the time it takes for secondary meanings to take hold in the market. 

Real-life example 

A recent case provides an interesting court interpretation of these trademark concepts. AuSable River Trading Post, LLC v. Dovetail Solutions, Inc., from August 2018, involved a wholesaler who wanted to use on shirts the trademark "Perchville," which is the name of a yearly city festival in Tawas, Michigan, that has been going on for about 60 years. The Chamber of Commerce registered the mark and licensed it to parties who wanted to use it commercially. 

The court found that Perchville is an inherently distinctive trademark because it is fanciful. It is not a real place but was made up in 1949 to identify the town's winter festival. The court opinion says it is also suggestive because "perch" is a fish and "ville" is used for the "names of fictitious places or concepts denoting a particular quality," quoting The New Fowler's Modern English Usage. 

This case, available through the link above, provides well-articulated characteristics of the types of trademarks we discuss here.


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