A trademark is a form of intellectual property – such as a word, phrase, stylized word, logo, color or sound – that allows a consumer to understand the source of goods or services (the company that makes the specific goods or provides the services) and the quality of those goods or services.  That is the trademark definition.  While today “trademark” is used for all marks, trademarks are traditionally used on goods or their packaging.  A service mark is traditionally used in advertising for services.

Trademark law is defined by the Lanham Act, a federal statute that was enacted by Congress in 1946. The Act provides for a national system of trademark registration and protects the owner of a federally registered mark against the use of similar marks if such use is likely to result in consumer confusion, or if the dilution of a famous mark is likely to occur.  A trademark must be in either interstate commerce or commerce Congress can otherwise regulate.

Preferably, those trademarks are strong marks. The strongest trademark would be called a fanciful trademark.  A fanciful trademark is a mark that does not, in its primary signification, indicate the goods or services of the trademark owner at all. It is arbitrarily selected by the trademark own to designate the source of the goods or services.

What is a Strong Trademark?

In an ascending order which roughly reflects their eligibility to trademark status and the degree of protection accorded, the classes of strength of trademark are (1) generic terms, (2) descriptive marks, (3) suggestive marks, and (4) arbitrary or fanciful.

Suggestive, arbitrary and fanciful marks, because their intrinsic nature serves to identify a particular source of a product, are deemed inherently distinctive and are entitled to protection. Descriptive terms deserve less protection than suggestive trademarks both because descriptive terms normally do not distinguish among similar products and because such terms should not be monopolized by a single use.  A distinctive mark is entitled to legal protection.  In seeking federal protection, descriptive marks may need to prove secondary meaning during the application process in order to gain distinctiveness legally.  

Generic terms are never entitled to trademark protection, while a descriptive mark is eligible for protection if it has become distinctive of the producer’s goods in commerce. This acquired distinctiveness is generally called secondary meaning. A generic term is one that refers, or has come to be understood as referring, to the genus of which the particular product is a species.

The most famous and traditional example of a fanciful trademark is Kodak.  Kodak, the word, has no meaning in any language.  The brand name was created for the sole purpose of marking cameras (of course, the goods and services have expanded over time). 

Why Choose a Strong Trademark?

Why choose a strong or fanciful mark instead of a weak trademark?

When a business adopts a mark incorporating a weak or descriptive term, it assumes the risk that competitors may also use that weak or descriptive term. Milwaukee Nut Co. v. Brewster Food Serv., 277 F.2d 190, 125 U.S.P.Q. 399, 401 (CCPA 1960) (opposer acted at its peril in choosing a highly suggestive mark). See also Sure-Fit Prods. Co. v. Saltzon Drapery Co., 254 F.2d 158, 117 U.S.P.Q. 295, 296 (CCPA 1958) (“Where a party uses a weak mark, his competitors may come closer to his mark than would be the case with a strong mark without violating his rights.”).

Under this scheme, a trademark owner must avoid having 1) similar trademarks and 2) similar goods/services.

A case recently highlights the need for trademark searches, due diligence, and understanding what trademarks are senior to a new mark. 

A company applied for the trademark of PRACTICE SAFE SIGHT to represent the goods of “eyewear products, including lenses for computer glasses, framed lenses, and magnification lenses.”  The United States Patent and Trademark Office rejected this application because of a company that already registered SAFESITE to represent the goods of “opthalmic lenses.”

In this particular case, the eyewear products that PRACTICE SAFE SIGHT represents are, necessarily, opthalmic lenses.  Therefore, the goods/services of the two marks are not just similar, they are both exactly the same.  Any arguments otherwise failed. The USPTO and any court must presume that PRACTICE SAFE SIGHT’s goods encompass all goods of the type identified, In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006), and there is nothing in PRACTICE SAFE SIGHT’s identification of goods to indicate that PRACTICE SAFE SIGHT’s lenses are not prescription lenses.

Next is a review of the marks themselves.  The problem with PRACTICE SAFE SIGHT in this case is that it is substantially similar in appearance and identical in sound to SAFESITE.  Yes, the marks are spelled differently.  But the spellings are not that different and the court did not see a difference in the meanings.  “We do not agree that customers would perceive this rather subtle distinction in meaning; even if they did, the marks’ similarities in appearance and sound render them more similar than dissimilar in their entireties.”  Even the word “practice” did not make a difference to the court.  The “addition of the word PRACTICE in the [PRACTICE SAFE SIGHT] mark merely serves to communicate an endorsement of trying to be safe.”  

So, in this particular case, the goods/services are similar.  The trademarks are similar.  The trademarks have some relationship to the goods/services of the parties involved in this case (“safe sight” and glasses).  As the court noted, “The marks are very similar and the goods identified in the application and registration are legally identical or, at the very least, closely related.”  That means the two marks are not allowed to be registered in the United States Patent and Trademark Office.

Weak Trademarks during the Federal Trademark Registration Process

Unregistered trademarks, common law trademarks, do not have as many legal rights as a federally registered mark.  The federal registration process, however, is not as straightforward for descriptive marks as trademarks that are suggestive, arbitrary, or fanciful.  

Merely descriptive marks will be refused registration on the federal register by the United States Patent and Trademark Office during the federal trademark registration process.  From the Trademark Manual of Examining Procedure outlining the legal requirements:  

• A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services. See In re TriVita, Inc., 783 F.3d 872, 114 USPQ2d 1574 (Fed. Cir. 2015) (NOPALEA held descriptive of dietary and nutritional supplements); In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987) (APPLE PIE held merely descriptive of potpourri); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986) (BED & BREAKFAST REGISTRY held merely descriptive of lodging reservations services); In re MetPath Inc., 223 USPQ 88 (TTAB 1984) (MALE-P.A.P. TEST held merely descriptive of clinical pathological immunoassay testing services for detecting and monitoring prostatic cancer); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979) (COASTER-CARDS held merely descriptive of a coaster suitable for direct mailing). 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. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Bayer Aktiengesellschaft, 488 F.3d 960, 963-64, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007).

The examining attorney is not required to prove that others have used the mark at issue or that they need to use it; the correct test is whether the particular mark conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods.

How to Prove Secondary Meaning or Acquired Distinctiveness during the Federal Trademark Registration Process

From the Trademark Manual of Examining Procedure: Nothing shall prevent the registration of a trademark used by the applicant which has become distinctive of the applicant’s goods in commerce. The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant’s goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made. Nothing in this section shall prevent the registration of a mark which, when used on or in connection with the goods of the applicant, is primarily geographically deceptively amisdescriptive of them, and which became distinctive of the applicant’s goods.

If a proposed trademark or service mark is not inherently distinctive, it may be registered on the Principal Register only upon proof of acquired distinctiveness, or “secondary meaning,” that is, proof that it has become distinctive as applied to the applicant’s goods or services in commerce. If the applicant establishes, to the satisfaction of the examining attorney, that the matter in question has acquired distinctiveness as a mark in relation to the named goods or services, then the mark is registrable on the Principal Register under §2(f) of the Trademark Act, 15 U.S.C. §1052(f).

A combination of these things can show Secondary Meaning or Acquired Distinctiveness of a descriptive trademark or business name: 

• Sales Figures
• Marketing Expenditures
• Hits on a website
• Downloads of digital products
• Consumer Surveys.

Types of Trademarks

A trademark can be:

• Brand Name
• Trade Name
• Domain name
• Comapny name
• Personal Name
• Logos
• Colors

In the case of domain names:

• “Generic.com” terms used as domain names may qualify for trademark protection if they demonstrate distinctiveness and secondary meaning.
• The ruling did not settle the types of evidence needed to prove that a “generic.com” term is a trademark, with some justices and commentators questioning the efficacy of traditional consumer surveys.
• The scope of protection for “generic.com” marks remains to be defined in future cases, acknowledging that even a successful registration may constitute a weak mark.
• The case, United States Patent and Trademark Office v. Booking.com B.V. (No. 19-46, June 30, 2020), sets a precedent that generic terms may achieve trademark status when combined with “.com” and when they can establish a unique market position through usage and consumer recognition.

In the case of colors, the color must be distinct for the use protected.

In the landmark case of Qualitex Co. v. Jacobson Products Co., Inc., the U.S. Supreme Court established that colors could be trademarked under certain conditions. This decision has had profound implications for trademark law and branding strategies.  

Qualitex Co. had long used a distinctive green-gold color for its press pads, which are used in dry cleaning presses. When Jacobson Products began selling similarly colored pads, Qualitex sued for unfair competition and trademark infringement, setting the stage for a legal battle that would end at the Supreme Court.

The lesson here is that understanding the trademark definition – the use of a mark on goods/services and the differentiation between goods/services – would have helped this trademark applicant not waste time and money on a mark that was not able to be registered.

What are Trademark Rights?

​Trademark owners have the following exclusive rights:

• To register the mark on the Principal Register of the U.S. Patent and Trademark Office.
• To use the Registered Trademark Symbol after the trademark that is registered at the USPTO.
• To define the goods and services that the mark is used on.
• To prevent the unauthorized use of a trademark that is junior to the owned mark.
• To enforce a registered mark in federal court.
  • To enforce a mark against a junior user of a similar mark on similar goods or services.
  • To start legal actions in either federal district court or the Trademark Trial and Appeal Board.

If you have any questions about trademark law, please call Verna Law, P.C. at 914-908-6757 or send an e-mail to anthony@vernalaw.com.