Not All Trademarks Are Created Equal: What You Need to Know Before You Meet with Your Marketing Team
“All animals are equal, but some animals are more equal than others.”
– George Orwell, Animal Farm
As far as intellectual property attorneys are concerned, when George Orwell wrote the infamous quote above, he may as well have been talking about trademarks. As with the animals in Animal Farm, not all trademarks are created equal. Some are not eligible for protection at all; others, while eligible for protection, maybe protectable only under certain circumstances or may not be granted as much protection as others.
Whether a trademark is protectable, and the amount of protection it receives, is analyzed in part based on the trademark’s conceptual strength or its “distinctiveness.” The less distinctive a mark is, the less likely it is protectable (if at all); conversely, the more distinctive a mark is, the more likely it is protectable.
The classifications of trademark distinctiveness are as follows:
- Not Inherently Distinctive – These types of marks are either never protectable or are only protectable upon a showing of additional evidence.
- Generic – Generic marks exist where the mark is the common name of the good or service with which it is used. For example, “apple” would be generic for a mark used in connection with the sale of apples. Generic marks have no distinctiveness and are never eligible for trademark protection.
- Descriptive – Descriptive marks exist where the mark is descriptive of a characteristic or quality of the good/service for which it is used. For example, Zatarain’s “Fish-Fri” mark was held to be descriptive of a breading that is used to fry fish. Descriptive marks are not inherently distinctive (and therefore are not inherently protectable as trademarks). They can acquire distinctiveness over time, but this requires additional evidence to show that this distinctiveness has been acquired.
- Inherently Distinctive – These types of marks are protectable without any additional evidence.
- Suggestive – Suggestive marks refer to a characteristic of the relevant good or service, requiring some imagination to identify the good or service. For example, “Coppertone” is suggestive for sunblock.
- Arbitrary – Arbitrary marks are existing words that have no logical relation to the relevant goods or services. For example, “Apple” is arbitrary when used for computers.
- Fanciful – Fanciful marks are marks that did not previously exist and were only created by the producer to identify its brand. For example, “Exxon” is a fanciful mark.
The types of trademarks that companies and their marketing departments often prefer either name the product directly or describe the product or its qualities. This allows the mark to immediately convey the type of product to the consumer. However, as you can see, from a trademark perspective those marks are typically generic or descriptive and therefore are the least desirable because they are not inherently distinctive. In contrast, distinctive marks, which do not describe or name the goods or services, most easily obtain trademark protection.
George Orwell also said, “The worst thing you can do with words is to surrender them.” Do not surrender your words by choosing unprotectable or weak trademarks. As attractive as it may seem to choose a generic or descriptive mark, if you are choosing a trademark that you plan to build and grow into a successful brand, and want to be able prevent others from infringing your mark and trading off of your hard-earned goodwill, you should choose a more distinctive mark, one that is created more equal than the others.