As if choosing a trademark or service mark is not hard enough, businesses and individuals need to understand that there really is no such thing as a generic trademark. If your mark is generic, you do not have a trademark under law. A trademark attorney should urge his or her clients to select a fanciful, arbitrary, or suggestive trademark, in that order, because these types of trademarks are inherently distinctive and protectable as long as the trademark owner has actually used the trademark. Merely descriptive trademarks are not inherently distinctive, but nonetheless are entitled to protection if they have acquired distinctiveness, or secondary meaning. Generic marks get no trademark protection. See Tumblebus Inc. v. Cranmer, 399 F.3d 754 (6th Cir. 2005).
Below is a guide in order to help you better understand the fine line distinctions between these trademark classifications.
Fanciful Trademark – a combination of letters or other symbols signifying nothing other than the mark’s product or service. Simply put, if not for the product or service to which it pertains, what could this word possible mean? Examples include EXXON and KODAK.
Arbitrary Trademark – a word with significance recognized in everyday life, but instead of signifying that thing, it signifies something entirely unrelated to the product or service to which the mark is attached. Examples include CAMEL cigarettes and APPLE computers.
Suggestive Trademark – a word that suggests, as opposed to describes, an ingredient or characteristic of the product or services and requires you to use imagination and perception to determine what the goods or services actually are. An example would be TUMBLEBUS, the trademark for a mobile gym on wheels.
Merely Descriptive Trademark – a word that identifies the characteristics of the product or service. It is like an adjective. An example would be DEEP BOWL to describe a spoon with a deep bowl for scooping.
Generic Trademark (also referred to as Common Descriptive Trademark) – a term that is commonly used as the name of the kind of goods or services. Examples could include a brand of shoes called SHOES or a hair cutting establishment called BARBER.
Admittedly it is difficult to tell the difference between a generic and a descriptive mark, but a simple question to ask is: Does the mark identify the source of a product OR does the mark identify the genus of which the product is a species? If it identifies the source of the product, it is a trademark and entitled to protection under trademark law (leaving aside the need to show secondary meaning for merely descriptive marks). Judge Friendly has perhaps provided one of the easiest examples to help distinguish between a generic and a merely descriptive mark with the “Deep Bowl Spoon” example:
“Deep Bowl” identifies a significant characteristic of the article. It is “merely descriptive” of the goods, because it informs one that they are deep in the bowl portion . . . . It is not, however, “the common descriptive name” of the article (since) the implement is not a deep bowl, it is a spoon . . . . “Spoon” is not merely descriptive of the article, it identifies - the article - (and therefore) the term is generic.
See Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 10, n.11 (2d Cir. 1976), quoting Fletcher, Actual Confusion as to Incontestability of Descriptive Marks, 64 Trademark Rep. 252, 260 (1974).
So what does this all mean to you? If you are trying to select a mark to use as a trademark, it makes sense to discuss it with a trademark attorney. A trademark attorney should be able to give you similar examples of your mark, classify your mark within one of the above trademark classifications, and discuss the best ways to protect it, such as trademark registration. If you have already selected the mark, and attempted to register it, a trademark attorney can help you navigate your way through the United States Patent & Trademark Office’s Trademark Trial and Appeal Board (TTAB) proceedings and offer arguments to support your registration. In addition, should you be on the receiving end of a trademark infringement lawsuit or a cease and desist letter, a trademark attorney can identify defenses based upon the above trademark classifications. The trademark classification can mean everything in a trademark infringement lawsuit, UDRP matter, or ACPA lawsuit. In order to know your rights, you need to know your trademark classification, or that of another.