A trademark or service mark is any word, name, phrase, symbol, device and/or design that serves as a source identifier. Trademarks and service marks serve to distinguish your products and/or services from those offered by others. When we choose a product and we like it, the next time we choose it we have an expectation that it will be the same as the last time. With this in mind, there is a level of quality control attached to the mark which is associated with the product. While trademark rights exist from the moment you first use the mark (registration is not necessary to have these rights), a federal registration does offer many advantages. The availability of such a registration is determined by how good the mark is.
In the trademark field, discussions revolve around what is called a spectrum, in relation to the strength of the mark. On the one end, there are generic terms which can never function as a source identifier. The word “cracker”, for example, would not be capable of trademark protection for crackers, because this is the generic name of what the item is. Just up the spectrum from generic are descriptive marks. Descriptive marks are not considered registerable as a trademark, unless it can be shown that through extensive use, the mark has come to be known as serving as a source identifier. In other words, it has acquired distinctiveness. For example, “best buy” was considered descriptive of retail store services, but after extensive use in the marketplace and a large advertising budget spent on promoting the brand name, Best Buy had a mark that was deemed to have acquired distinctiveness. Hence, despite being descriptive, it was determined that it was functioning as a source identifier and was entitled to registration. The next level from descriptive marks on the spectrum are suggestive marks. Just as the name sounds, this would be a mark that doesn’t describe the product, but it is suggestive of a quality or characteristic of the product. An example of a suggestive mark would be Sweet Lips for lipstick. Since the mark is not merely descriptive but just suggestive, it is entitled to registration without having to acquire distinctiveness.
Finally, at the top of the spectrum are the best trademarks, both arbitrary and fanciful. Arbitrary marks are common terms, but used in a completely unrelated way. The most commonly cited example of an arbitrary mark is Apple for computers. We all know what an apple is, but fruit has nothing to do with computers. Thus, this is an arbitrary use of the word apple as a trademark for computers. Fanciful marks, the absolutely strongest type of mark, is a completely made up word that does not exist in language when it is coined, Kodak for example. While we are now familiar with this term, we still only know it as a brand name for cameras and other photography supplies. It has absolutely no meaning other than as a source identifier for that company’s products. While fanciful marks are the strongest, they are also the most susceptible to becoming generic and thus, are no longer entitled to trademark protection, particularly if it is a pioneer product. A very famous example is the little known fact that the word “escalator” was once a trademark of Otis Elevator Company. They did not, however, properly use a generic form with the trademark, or always refer to their product as escalator moving stairs, so the public associated the word “escalator” as the name for the moving stairs. Thus, it became the generic term for moving stairs and trademark protection was lost, never to be capable of being reacquired.
In conclusion, trademarks and service marks are very useful because they serve as a source identifier for your business and/or products, which will enable customers to become return customers. When choosing your business name or product name, remember to keep in mind the distinctiveness spectrum to ensure that you make a choice that is capable of trademark protection.
Carol Ney is an attorney in the law firm of Dressman Benzinger LaVelle, with offices in Cincinnati, Ohio, Crestview Hills, Kentucky, and Louisville, Kentucky
