“As a trademark attorney, I am often presented with clients whom do not understand why a mark cannot be a generic or descriptive mark. It is my job to educate them why they should always select a Suggestive, Arbitrary or Fanciful mark.” Juliet Alcoba.
A Generic mark can never be protected. What is a Generic brand? A mark is generic if its primary significance to the relevant public is the class or category of goods or services on or in connection with which it is used. A two-part inquiry is used to determine whether a designation is generic: (1) What is the genus of goods or services at issue? (2) Does the relevant public understand the designation primarily to refer to that genus of goods or services? It is not necessary to show that the relevant public uses the term to refer to the genus. The correct inquiry is whether the relevant public would understand the term to be generic.
A Descriptive mark may be registered, yet it will bring very little trademark protection. So what is a Descriptive trademark? A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services. Similarly, a mark is considered merely descriptive if it immediately conveys knowledge of a quality, feature, function, or characteristic of an applicant’s goods or services. The determination of whether a mark is merely descriptive must be made in relation to the goods or services for which registration is sought, not in the abstract. This requires consideration of the context in which the mark is used or intended to be used in connection with those goods/services, and the possible significance that the mark would have to the average purchaser of the goods or services in the marketplace. The mark need not describe all the goods and services identified, as long as it merely describes one of them.
A suggestive mark can be protected and it can suggest the products or services sold under the mark, yet often the USPTO will attempt to reject a suggestive mark as descriptive. So what is a suggestive mark? Suggestive marks are those that, when applied to the goods or services at issue, require imagination, thought, or perception to reach a conclusion as to the nature of those goods or services. Thus, a suggestive term differs from a descriptive term, which immediately tells something about the goods or services. Incongruity is a strong indication that a mark is suggestive rather than merely descriptive. The Board has described incongruity in a mark as “one of the accepted guideposts in the evolved set of legal principles for discriminating the suggestive from the descriptive mark,” and has noted that the concept of mere descriptiveness “should not penalize coinage of hitherto unused and somewhat incongruous word combinations whose import would not be grasped without some measure of imagination and ‘mental pause.
An arbitrary mark is a strong mark that will receive protection from the USPTO and the State and Federal Courts. We recommend to our clients to select arbitrary or fanciful marks. So what is an arbitrary mark? Arbitrary marks comprise words that are in common linguistic use but, when used to identify particular goods or services, do not suggest or describe a significant ingredient, quality, or characteristic of the goods or services.
A fanciful mark is an extremely strong mark, yet it will require work in building brand recognition, yet when brand recognition is acquired, the mark will be respected by the USPTO and the State and Federal Courts. So what is a fanciful mark? Fanciful marks comprise terms that have been invented for the sole purpose of functioning as a trademark or service mark. Such marks comprise words that are unknown in the language.
We hope that the above explanation allows you to select the proper mark to represent your goods or services.
Written by: Juliet Alcoba, Esq., Miami Trademark Attorney, Ⓒ 2021 Alcoba Law Group P.A.
Picture Credits: Miri Paez Bolet.
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