A trademark is any device – such as a word, phrase, stylized word, logo, color or sound – that allows a consumer to understand the source of goods/services (the company that makes the product or provides the service) and the quality of those goods/services. That is the definition of a trademark.
Trademarks are categorized by the strength of the trademark and the goods/services the trademark represents to the consumer.
There are four categories of word marks which can be registered.
1) Fanciful – the strongest trademark. The mark has no relation to the business’s goods and services, and that creates a presumption that the mark’s existence is owed to them. Kodak, Polaroid, Kleenex, Twizzler, M&M’s, Snickers, Linux, and Google are examples of fanciful trademarks. They are unique, made-up words created as trademarks that had no bearing on the related goods (cameras, tissues, candies, computer operating systems, and web site indexing tools).
2) Arbitrary – a strong mark, but weaker than a fanciful mark. The mark has no relation to the product, but the word already exists. “Apple” and “all,” for example, are real words, but there is nothing about Apple or All that might lead a prospective purchaser to associate those words with computers or laundry detergent.
3) Suggestive – the mark suggests something about the product; however, the connection between the mark and the goods or services must still not be completely obvious. Frigidaire, iPad, Xerox, Walkman, and Mercury are examples of marks “suggesting” goods associated with cold air (refrigerators), pads to write on (hand-held computing devices), equipment used in xerography (copiers), a man walking about (portable, personal stereos), and getting somewhere as fast as a Roman god’s messenger (motors, e.g. outboard motors for boats). Note that some of these examples are unique, made-up words. However, their lexicographic origins “suggest” something associated with the prefix or suffix.
4) Descriptive – the mark describes the product. This is a very weak trademark that requires “secondary meaning” in order to gain trademark protection. Most descriptive marks do not gain trademark protection. The mark owner must prove that the public can identify that the product comes from the mark owner. The slogan, “The milk chocolate melts in your mouth, not in your hands” is descriptive of any chocolate candy coated with a hard shell, but after many years of continuous use the consuming public associated that slogan with M&M’s chocolate candies, entitling the maker to registration.
Another example is a recent case in which CHEESE ZOMBIES was rejected as “merely descriptive” for baked goods. The phrase “cheese zombies” immediately conveys an idea of the characteristics of the goods, i.e., they are a type of baked product filled with cheese. Indeed, “cheese zombies” is almost always used to describe the same type of baked item filled with cheese. Therefore the mark is merely descriptive. There is no secondary meaning because there are media references to “cheese zombies,” newspaper listings of school menus in California, Washington State, and Missouri, and at least eight on-line recipes for “cheese zombies”. This means that the owner of the trademark application did not exclusively use the mark.
Two categories of terms that won’t be accepted for registration are worth mentioning. Obscenities will be rejected. A registration application will inevitably be rejected if the word(s) is Generic – words that are the same or equivalent to the goods or services. These words can never be registered as trademarks, and they are given no protection whatsoever. Remember that trademarks tell the purchasing public the source of the goods and services, and generic terms can’t convey that information because the source is not distinguishable from other business sources if the mark is generic. It is also important to keep in mind that it doesn’t matter whether the generic terms are real words or made up words. For example, “apple” is a real word, and Apple was acceptable for registration in connection with computers, but that word may never be the trademark of a grower or seller of apples. Girlgear is an example of made-up word, but it still can’t be registered as a trademark of athletic apparel (also known as gear) for girls.
Colors can be trademarks – but the trademarks themselves are very narrow. It is just the color – but it must be used by the company claiming the trademark. Recently, the color blue was registered for “cleaning preparation for air conditioning or refrigeration coils.” Now, single color trademarks can never be inherently distinctive. Moreover, color marks “carry a difficult burden in demonstrating distinctiveness and trademark character.” In this case, there were several other companies that sold similar and economically related goods/services (if not exactly the same) that also used a blue color in their packaging and advertising. Therefore, the color could not be a trademark. Contrast this to T-Mobile having the color magenta as a trademark in cell phones. Any company outside the cell phone industry can use magenta in their products or advertising. But because T-Mobile was able to scoop up a color that was unique in its industry – it registered the narrow trademark.
Remember, trademarks are about the mark, the strength of the mark, and the goods/services that the marks represent so that trademarks that multiple parties use and attempt to register at the United States Patent and Trademark Office do not cause a likelihood of confusion in consumers.
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