What’s the difference between a ROLEX brand timepiece and a HONEY BAKED HAM brand holiday ham? The answer is more than just whether they would make for an enjoyable Easter dinner. One is a strong, fanciful trademark and the other is constantly in danger of becoming generic. This difference in distinctiveness significantly affects the intellectual property protections that each mark receives.
When researching a new brand and corresponding trademarks, it is essential to consider the distinctiveness of the mark. Creating a “strong” trademark helps avoid confusion with existing marks and increases the likelihood that your mark can be registered.
Marketers and trademark lawyers gauge the strength of any trademark on a “Spectrum of Distinctiveness.” The spectrum ranges from “Fanciful” marks to “Descriptive” marks. Generic marks fall outside the spectrum because a “generic trademark” is an oxymoron. If the word is generic – like “computer” describing a laptop or “pantyhose” describing women’s sheer hosiery – then it cannot communicate a single source of the product to the consumer and does not constitute a trademark at all.
Trademark lore is rife with stories of trademarks that fell off the spectrum of distinctiveness and became generic – free for everyone to use. For example, “Trampoline,” “Aspirin,” “Corn Flakes,” “Escalator,” “Cellophane,” and “High Octane” were once trademarks in the U.S., but they because generic words, losing their significance and their trademark rights.
→Fanciful Marks – Arbitrary Marks – Suggestive Marks – Descriptive Marks←
Fanciful Marks – Fanciful marks are the strongest of all marks. A fanciful mark is a letter string that has no independent meaning in the English language, such as EXXON for motor fuels or KODAK for cameras. Fanciful marks are the easiest to register, but they do not describe or convey to consumers what the product is or what it does. As a result, it may initially take more time and money to market the brand and educate the marketplace.
But sometimes even fanciful marks risk becoming generic. If marketing is too successful at identifying the brand with the product and fails to give consumers an alternative name for it, then the brand may ultimately become the name of the product itself. Xerox Corporation regularly reminds consumers not to “make a xerox of this report,” but rather to “make a copy with the Xerox machine,” so that XEROX does not become a generic term for “photocopying.” Kimberly-Clark would prefer that you not ask for a kleenex but that you instead ask for “a Kleenex brand facial tissue.” On the packaging, Johnson & Johnson always puts “brand adhesive bandages” right after its BAND-AID trademark, and Kraft Foods is careful to provide the generic product descriptor “flavored gelatin” for its JELL-O brand. And this “message from the lawyers at Velcro Companies” entreats customers: “Don’t Say Velcro.” (Spoiler alert: It’s supposed to be VELCRO brand hook and loop fasteners.)
Arbitrary Marks – Arbitrary marks are words that appear in the dictionary but are arbitrarily used in connection with the product, with no independent meaning or association with respect to the product. Some examples include KIWI for shoe polish, CAMEL for cigarettes, and AMAZON for an online retail store. Arbitrary marks are arguably just as strong as fanciful marks, but because these words do have their own definitions, we put them slightly lower on the spectrum.
Suggestive Marks – Suggestive marks suggest to the consumer something about the function, features, or attributes of a product or service, but do not directly communicate what the product is. For example, COPPERTONE brand suntan lotion suggests to the consumer that using the product will give them a beautiful copper tone to their skin, but the designation “Coppertone” by itself – separate and apart from the packaging and the product itself – would not immediately tell the consumer what the product is.
Similarly, SILK REFLECTIONS brand sheer hosiery suggests to the buyer that these products will feel silky or may give an attractive, silky appearance or “reflection” to the wearer’s legs, but the trademark itself does not immediately convey what the product is.
Marketers generally love suggestive marks because these brands help sell the product or service by hinting at its features without directly describing them. But the distinction between suggestive marks and descriptive marks can be a bit subjective, and one should take care not to become “merely descriptive.”
Descriptive Marks – Descriptive marks simply describe an ingredient, quality, characteristic, function, feature, purpose, or use of a product or service. For example, BRITISH AIRWAYS merely describes an airline carrier based in Great Britain. SPORTS ILLUSTRATED describes an “illustrated” magazine devoted to sports. SPRAY ‘N WASH describes a stain removing preparation that sprays on clothes before you wash them.
Descriptive trademarks are not immediately registrable and are not easily protected, but they can be registered once they have become recognized as an indicator of a single source of a product. This is called “secondary meaning.” Given a sufficient period of time and exposure to enough sales and advertising efforts, the consuming public typically comes to associate a descriptive mark with a single company or source for that product. Despite the descriptive mark’s humble beginnings, this is the fundamental definition of a trademark.
Descriptive marks are hard to register, but they are often in danger of becoming generic, so they can be even harder to keep. Sometimes they become the generic product name, and sometimes consumers change the trademark into a verb to describe the activity, which also results in “genericide.” The makers of ROLLERBLADE boots don’t want you to say, “I’m going rollerblading,” but “I’m going to work out with my Rollerblade brand in-line skates. Please don’t “weed-eat the yard,” but you can always use your WEED EATER grass cutting tool to trim the lawn.
Conclusion – Using the “Spectrum of Distinctiveness” as a tool to assist in the selection of a trademark can save an owner time and money, both before and after registration of the mark. The advantage of choosing a stronger trademark on the spectrum compared to a weaker one increases the odds of a smoother path to registration, makes it easier to protect and defend the mark, and creates a more formidable association for your brand in the minds of consumers. So, businesses looking to protect their brands should try to be more like a ROLEX than a HONEY BAKED HAM—not only is the former much
A special thank you and acknowledgment to Alex Preston, Paralegal and Trademark Administrator, as a contributor to this article.