Where Does Your Brand Fall on the “Trademark Continuum”?

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This is the first in a series of two articles on the concept of the “trademark continuum”. Be sure to check back next month for the second installment.

Not all trademarks are created equally, and not all trademarks get the same amount of protection from courts. It is important to understand where a trademark lands on the “trademark continuum,” which is a concept that is frequently used to illustrate the legal strength of trademarks.

A legally strong mark is one that does an excellent job of fulfilling the basic essential function of a trademark, which is to identify to consumers the source of the goods or services with which the mark is used. On the other hand, legally weak marks are those that do a poor job of accomplishing this function. The classification of marks from strong to weak is sometimes broken down into several different categories based upon the characteristics of the mark as it relates to the goods or services with which it is used.

The most frequently used categories that are used to describe where a mark lands on the trademark continuum, from strongest to weakest, are these: fanciful marks, arbitrary marks, suggestive marks, descriptive marks, and generic marks. Fanciful, arbitrary, or suggestive marks are also considered to be inherently distinctive. This means these marks can fulfill their essential function of source identification from the start. Descriptive and generic marks are not inherently distinctive. Over time, descriptive marks can acquire distinctiveness. Generic marks, however, are incapable of achieving any measure of distinctiveness.

The strongest type of trademark is a fanciful mark. As the word implies, a fanciful mark has no meaning other than its use as a trademark.  When a consumer sees a fanciful trademark, he or she thinks only about the product or service with which it is associated. Thus, fanciful marks make a strong impression. Fanciful marks are essentially made up words. Examples include EXXON, TYLENOL, KODAK, and XEROX.

The next strongest marks on the trademark continuum are arbitrary marks. These are marks in which existing words are used in relation to goods or services with which they bear no relation. Famous examples include APPLE for computer products, CAMEL for cigarettes, and ORACLE for software.

While still inherently distinctive, suggestive marks are not as strong legally as fanciful or arbitrary marks. These types of marks typically include some level of description of the good or service, but still require the consumer to make a leap in thought (often described by courts as requiring the use of “imagination, thought and perception”) to reach a conclusion as to the exact nature of the goods or services. Examples include AIRBNB for online booking of vacation rentals, CHICKEN OF THE SEA for canned tuna fish and OFFICE DEPOT for office supply store services.

Descriptive marks are what their name implies. These are marks that describe the good or service with which they are being used. They do not require a lot of thought by consumers to make the connection between the mark and the associated goods or services and are therefore considered not to be inherently distinctive. Over time, some descriptive marks can acquire distinctiveness and become strong brands. Examples include BANK OF AMERICA for banking, SHARP for electronics including televisions, and APPLE PIE for potpourri.

The final category, generic marks, are not trademarks at all because they cannot serve the core function of identifying the source of the goods or services. YELLOW CAB for taxi services and MATRESS.COM for an online mattress store are some examples of marks that have always been considered to be generic. Other generic marks started out life as strong marks, but then died a slowly diluted death ending up in the generic trademark graveyard. Victims include YO-YO for string toys, ASPIRIN for headache relievers, and ESCALATOR for moving stairs.

In the next installment, we will discuss what businesses can do when a conflict arises between (a) the desire for a descriptive brand for marketing purposes, and (b) legal counsel’s recommendation to avoid selecting a legally weak trademark.

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