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Creativity of Trademark Determines Protection

  • By: Robert Klein

Trademark distinctiveness is the measure by which a court will determine whether you have a valid trademark. In a post last week, we mentioned the strong versus weak trademarks. Today, we discuss the scale that courts often use when determining where a trademark falls.

At the top of the scale are strong trademarks like fanciful or arbitrary trademarks which are creative and unique. Trademarks like Kodak, Verizon and Polaroid are fanciful because they have no meaning aside from that which their companies gave them. Arbitrary trademarks are those like Apple, because the word “apple” has no connection with consumer electronics and computers whatsoever. The link between the two is thus purely arbitrary. Fanciful and arbitrary trademarks easily qualify for trademark protection.

Next down the trademark scale are suggestive and descriptive trademarks. Suggestive marks are not quite as creative as the prior types, but usually do merit some type of trademark protection. The convenience store 7-Eleven, for example, originally suggested the store’s hours.

Descriptive marks are less likely to receive trademark protection than suggestive marks. Descriptive marks often require proof – the so-called “secondary meaning” – that consumers associate the mark with a certain product in order to receive protection. Kentucky Fried Chicken is one such example.

Finally, at the bottom of the distinctiveness scale are generic trademarks. These marks do not differentiate one product from another on the market, so they do not deserve trademark protection. Baking soda, for instance, is a generic term. Former trademarks may become so commonly used in everyday language that they become “genericized.” This happened to former marks like aspirin and rollerblade.

When considering your company’s name, did you try to create a fanciful name to easily qualify for trademark protection?

Robert Klein

About the Author Attorney Robert Klein is a former CPA and known for
finding creative solutions to complex business lawsuits.