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.
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.