One of the most important assets that a company has is its Trademark. As I have said before, people don’t eat at [insert successful burger chain here] because of its food; they eat there because of the name.
A trademark is what distinguishes your business. If successful, it becomes what people associate with your business. Successful companies of any size work hard to build up their image and increase customer goodwill. Because of how valuable a trademark and its association to your business is, it is important to know how likely it is to be protected from others who want to capitalize on your success.
There are many factors which go into whether a trademark can be protected. Perhaps one of the most important factors is how distinctive the trademark is. The more distinctive or unrelated to the product a trademark is, the stronger the protection afforded.
There are various levels of distinctiveness for a trademark. Ranging from strongest to weakest, they are: (1) Fanciful, (2) Arbitrary, (3) Suggestive, (4) Descriptive, and (5) Generic.
A “fanciful” trademark is one that has no other meaning, outside of being the trademark. For example, if you were to create a new word for your brand name or company name, that would be afforded the strongest trademark protection. If a competitor were to use that to describe a similar product, infringement would be not too difficult to prove.
For example, before the companies of Kodak and Exon were formed those words had no meaning. If someone else were to start a company and call it “Kodak,” they will almost assuredly be found to be infringing on Kodak’s trademark.
“Arbitrary” trademarks use a word that is common or has other meaning; but the word has nothing to do with the product. This is still a very strong trademark, because if someone creates a competing product and uses the same arbitrary name it would not be very hard to show that they are infringing your trademark.
For example, if you sell toys and name your company “Ocean,” that trademark will likely be protected. If another toy store were to open and try to call themselves “Ocean” it would be fairly clear that they were trying to steal your business or the goodwill your business has developed.
“Suggestive” trademarks suggest what the product is or something about it without actually describing it. Such a mark would require some amount of imagination to connect the dots. One example is “Tide” laundry detergent. It is not describing the detergent but, with a little imagination, suggests that it will make your clothes smell like the ocean.
Such marks are still inherently distinctive and receive trademark protection. However, if someone were to try to infringe that mark the battle may be a little harder because they are closer to simply describing the product.
A “descriptive” trademark describes something about the product or service. For example, “Discount Tire” is a descriptive mark because it is describing that they sell tires at a discounted price. To determine if a mark is descriptive, the courts look to things like the dictionary definition, whether it requires the use of imagination to see the connection, and whether competitors would need to use those terms to fairly compete.
Descriptive marks can still receive trademark protection, but only if the company can prove it has developed “secondary meaning.” In other words, has it been used as a trademark for long enough and predominantly enough that the public now immediately associates that mark with the particular business or product, and not just for the words it uses?
Generic marks are just the common language name for the product or service. Because of that, they are not given trademark protection. For example, if you were to try and sell beer under the brand name “Beer,” you would not be afforded trademark protection. There is nothing that connects the mark with your particular product or service or sets it apart from others.
There are a lot of nuances to choosing a trademark that will stand up to protection from infringement by competitors. If you own a business and are concerned that someone might be infringing your trademark, contact the experienced trial attorneys at Goosmann Law Firm, PLC, in our Omaha, Sioux City, and Sioux Falls offices.
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