How Strong Is My Trademark?
Featured, Intellectual Property
By Rayan Felix Coutinho
If you already have a trademark or service mark, or if you are contemplating the adoption of a new mark, you can evaluate the strength of your existing or proposed mark using the principles that follow to determine the degree of protection afforded to it under the law. If your mark is functional then it is not protected. For example, an application for the registration for bright orange color for pay telephones designed to be visible to passing motorists was denied registration. A product feature is functional and cannot serve as a trademark if the feature is essential to the use or purpose of the article or if it affects the cost or quality of the article, i.e. if exclusive use of the feature would put competitors at a significant non-reputation related disadvantage.
Whether a plaintiff’s mark qualifies for trademark protection is determined by where the mark falls along the established spectrum of distinctiveness. Putative trademarks may either: (1) be inherently distinctive, or (2) acquire distinctiveness through secondary meaning. Within these two basic categories are sub-categories that form the complete spectrum of distinctiveness of marks. Arrayed in ascending order roughly reflecting their eligibility to trademark status and the degree of protection afforded, the categories are: (1) generic terms; (2) descriptive; (3) suggestive; (4) arbitrary or fanciful.
A generic or common descriptive term is one which is commonly used as the name or description of a kind of goods, e.g. BOOK, NEWSPAPER, and is not entitled to trademark protection under any circumstances. A trademark is descriptive “if it describes the intended purpose, function, or use of the goods; the size of the goods; the class of users of the goods; a desirable characteristic of the goods; or the end effect on the user.” Examples of descriptive terms include HOME-MARKET.COM for internet referral service targeting home owners and e-fashion for electronic retailing services via the internet. A suggestive term suggests rather than describes an ingredient or characteristic of the goods and requires the observer or listener to use imagination and perception to determine the nature of the goods. An example of a suggestive term is THE MONEY STORE for money lending services. A fanciful mark is a combination of letters or other symbols signifying nothing other than the product or service to which the mark has been assigned, such as EXXON or KODAK. Arbitrary marks have significance in everyday life, but the thing it normally signifies is unrelated to the product or service to which the mark is attached, e.g. CAMEL for cigarettes or APPLE for computers.
admin @ July 7, 2007