Descriptive Trademark Faults: A Curly Tale

Descriptive Trademarks
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In the world of trademarks, some marks are stronger than others. Fanciful marks are the strongest. These are made-up terms that have no meaning except as a brand, such as PEPSI or XEROX. Arbitrary marks are almost as good. These are real words that have no association with their respective goods or services, like APPLE (for computers) or CUB (for grocery stores).

The use of generic “marks” as brands are at the other end of the spectrum. In fact, generic terms – words that actually name their products or services – are legally incapable of functioning as brands. Examples of such terms are SMARTPHONE or E-MAIL. Descriptive trademarks are a close second when it comes to the lower end of the trademark strength continuum. These are terms that describe the goods or services to which the mark is applied, or a characteristic of those products. Such a term is not considered to be very protectable as a trademark until the public comes to recognize that term as a brand. Examples of descriptive terms that are now considered to be trademarks (but which, when first used, were doubtfully so), are BEST BUY (for retail store services) and OVERSTOCK.COM (for online retail store services).

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The gold standard for trademark protection is registration of a mark on the Principal Register of the U.S. Patent & Trademark Office (USPTO). The BEST BUY and OVERSTOCK.COM marks did not achieve this status until after the USPTO was convinced that each term had “acquired distinctiveness” in connection with its services.

The trademark strength continuum ranges from generic terms (weakest) to fanciful marks (strongest). For descriptive marks, there is also a spectrum of protection, ranging from “good” to “better” to “best,” analogous to the houses built by the three little pigs.

GOOD

The first little pig built his house of straw, without thinking ahead to what might happen if there was a big windy event. In our trademark analogy, this is akin to an unregistered descriptive trademark. In the U.S., trademark rights are acquired by “use” of a mark, so once even a descriptive mark is used, legal protection for that mark may be available under common law (and under Section 43(a) of the Lanham Act). Early in the life of that mark, such protection might be limited since the descriptive mark has not yet acquired distinctiveness among the relevant consuming public. As a result, that mark’s user may not be able to stop others from using that term until that user is able to prove that the term is distinctive (as applied to that user’s goods or services).

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BETTER

The second little pig built his house of sticks, again without giving much thought to its durability when faced with a windy adversary. In our trademark analogy, this situation is a bit like a descriptive mark where the user of that mark has only been able to obtain federal registration of the mark on the Supplemental Register of the USPTO. Unlike most countries, the U.S. will issue a registration for a mark that has not acquired distinctiveness, but that registration is on the Supplemental Register and lacks the significant advantages of a registration granted on the USPTO’s Principal Register.

A Supplemental Register registration allows its owner to use the ® symbol with the mark. The mark/registration then appears on the database of federally registered marks maintained by the USPTO and that registration may be cited by the USPTO as a barrier to registration of another similar mark.

BEST

The third little pig (the most industrious and wise of the three) built his house of bricks. While this took longer and was more expensive, he was planning for long term protection. In our trademark analogy, this is like a descriptive mark where the user of the mark has established that the mark is distinctive and thus been granted a federal registration on the Principal Register of the USPTO. The advantages of attaining this level of federal registration are significant:

  • Nationwide constructive notice of the mark’s ownership and validity.
  • Prima facie evidence of the registrant’s exclusive right to use the mark nationwide for the goods or services listed in the registration.
  • The ability to list the mark with U.S. Customs to stop importation of infringing goods.
  • After five years of registration, the mark can acquire “incontestable” status.

In addition, the registrant can use the registration symbol ®, the mark/registration will appear on the database of federally registered marks maintained by the USPTO, and that registration may be cited by the USPTO as a barrier to registration of another similar mark.

All is not lost when a client decides to use a descriptive trademark, but building sturdy protection around that mark may be a long play, requiring time to develop the requisite “acquired distinctiveness” for effective enforcement, and registration on the Principal Register. Z. Peter Sawicki and James L. Young

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