Is your Trademark “Fanciful”?

Is your trademark fanciful?

 

1) Fanciful Trademarks – The Pinnacle of Strength:

• These are the strongest type of trademarks, with no connection to the business’s goods or services.
• Examples include Kodak, Polaroid, Kleenex, and Google – unique, made-up words unrelated to their respective industries.

2) Arbitrary Trademarks – Strong Yet Existing Words:

• Marks with no apparent connection to the product, but the words already exist.
• Examples like “Apple” for computers or “All” for laundry detergent showcase the strength of arbitrary marks.

3) Suggestive Trademarks – Implying Without Direct Connection:

• Marks that suggest something about the product without an obvious link.
• Examples include Frigidaire, iPad, and Xerox, offering a subtle connection without being overly explicit.

4) Descriptive Marks – Weak, Requires “Secondary Meaning”:

• Marks directly describing the product, needing additional proof of public association with the owner.
• While weak, some, like the iconic M&M’s slogan, gain protection after establishing a unique association.

 

The most famous example of a fanciful trademark is Kodak – it is not a word in the English language and was created only for the trademark for a camera and photography company.  Other examples of fanciful trademarks include:

1. Kodak (for cameras and photographic supplies) – A completely made-up word created for the brand.

2. Xerox (for photocopiers and related products) – An invented term with no prior meaning.

3. Pepsi (for soft drinks) – Originally coined as “Pepsi-Cola” with no existing meaning before its use as a brand name.

4. Exxon (for oil and gas) – A unique word created specifically for the brand.

5. Lego (for building toys) – Derived from the Danish phrase “leg godt” meaning “play well,” but as a coined term, it is considered fanciful.

6. Rolex (for watches) – An invented term created for the brand.

7. Clorox (for bleach and cleaning products) – A coined term with no prior meaning.

8. Verizon (for telecommunications) – A portmanteau of “veritas” (Latin for truth) and “horizon,” created for the brand.

9. Google (for internet search engines and related services) – A playful alteration of the mathematical term “googol,” representing a 1 followed by 100 zeros, created specifically for the brand.

10. Sony (for electronics and entertainment) – A made-up word combining “sonus” (Latin for sound) and “sonny,” a slang term used in the 1950s to refer to a boy or young man.

These fanciful trademarks are highly distinctive and typically enjoy strong legal protection due to their originality and lack of any prior meaning.

 

Arbitrary trademarks are marks that use common words in an uncommon way that has no relation to the goods or services being offered. Here are some notable examples of arbitrary marks:

1. Apple (for computers and electronics) – The word “apple” is a common noun, but it has no inherent connection to electronics.

2. Amazon (for e-commerce and cloud computing services) – The name of a famous river, unrelated to the products and services offered.

3. Camel (for cigarettes) – The animal name has no connection to tobacco products.

4. Shell (for gasoline and oil products) – The word “shell” is a common noun with no direct relation to petroleum products.

5. Gap (for clothing) – The word “gap” is a common noun but has no connection to apparel.

6. Jaguar (for cars) – The name of an animal used for a luxury automobile brand.

7. Apple (for a record label) – Again, the fruit name used for a company that produces music.

8. Blackberry (for mobile devices) – The name of a fruit used to brand communication devices.

9. Ivory (for soap) – The name of a material used to denote a brand of soap.

These examples illustrate how ordinary words can be used as trademarks in completely unrelated industries, making them arbitrary and thus strong candidates for trademark protection. An arbitrary trademark can be on the Principal Register of the United States Patent and Trademark Office.

 

Suggestive trademarks hint at or suggest the nature, quality, or characteristics of the goods or services without directly describing them. Here are some notable examples of suggestive marks:

1. Coppertone (for suntan lotion) – Suggests the tone or color of a suntan.

2. Netflix (for streaming services) – Suggests “internet” (Net) and “flicks” (movies).

3. Greyhound (for bus services) – Suggests speed and agility, qualities of the dog breed.

4. Microsoft (for software for microcomputers) – Suggests “microcomputer” and “software.”

5. Jaguar (for cars) – Suggests speed and sleekness, qualities associated with the animal.

6. Airbus (for aircraft) – Suggests an air-based mode of transport similar to a bus.

7. Facebook (for social networking services) – Suggests a book of faces or a directory of people.

8. Under Armour (for athletic apparel) – Suggests clothing worn under armor or protective gear.

9. 7-Eleven (for convenience stores) – Suggests the store’s operating hours, originally from 7 a.m. to 11 p.m.

10. Dairy Queen (for ice cream and dairy products) – Suggests excellence in dairy products, akin to royalty.

These examples show how suggestive trademarks create an association with the product or service, making them easier for consumers to remember and recognize, while still being distinctive enough to qualify for trademark protection.

 

Descriptive trademarks describe a characteristic or quality of the goods or services. While they are generally not protectable unless they acquire distinctiveness through secondary meaning, here are some examples of descriptive trademarks that have gained trademark protection:

1. American Airlines (for an airline company) – Describes an airline operating in America, but has acquired distinctiveness over time.

2. Bank of America (for banking services) – Describes a bank located in America, but has become distinctive through extensive use.

3. Holiday Inn (for hotels) – Describes an inn for holidays or vacations, but has acquired secondary meaning.

4. Best Buy (for electronics and appliances) – Describes a place where one can find the best buys or deals, but has become distinctive through usage.

5. Minute Rice (for quick-cooking rice) – Describes rice that cooks in a minute, but has gained distinctiveness.

6. Sharp (for electronics) – Originally describing the “sharp” image quality of its products, it has acquired distinctiveness.

7. Windows (for computer operating systems) – Describes a feature of the software, but has acquired secondary meaning.

8. General Motors (for automotive manufacturing) – Describes a company that manufactures motors, but has become distinctive.

9. ChapStick (for lip balm) – Describes a stick used for chapped lips, but has gained distinctiveness.

10. The Weather Channel (for a weather-focused television channel) – Describes a TV channel about weather, but has acquired secondary meaning.

These examples illustrate how descriptive marks can receive trademark protection on the Principal Register of the United States Patent and Trademark Office if they have acquired distinctiveness and are recognized by consumers as identifying the source of the goods or services. This greater protection does require evidence during the application process of market knowledge and power to gain that intellectual property protection.

 

The Pitfall of Generic Terms

Trademark applications at the United States Patent and Trademark Office face rejection if the words are generic, directly equivalent to the goods or services. Generic terms, whether real or made-up, can never be registered, lacking the ability to distinguish the source.

Crafting a Trademark for Impact

Remember, trademarks communicate the source of goods and services to the public. Generic terms fail to convey this crucial information. Whether selecting a real word like “Apple” or a made-up term like “Girlgear,” strategic trademark development is key to shaping your business’s image.

The Evolution of Trademarks

Interestingly, some trademarks evolve into generic words over time. Examples like Aspirin, Cellophane, and Escalator began as trademarks but became integral parts of everyday language.

In conclusion, understanding the strength of your trademark is pivotal for effective brand protection and recognition. Choose wisely to secure your business’s unique identity in the competitive market.

 

Verna Law, P.C. handles trademark issues of all stripes – and can help you find a strong trademark to register.  Call us at 914-908-6757 or send an e-mail to anthony@vernalaw.com.  

 

Case Examples and Lessons:

Case Summary: Jewish Sephardic Yellow Pages, Ltd. v. DAG Media, Inc.

Court: United States District Court, Eastern District of New York
Date: March 19, 2007
Citation: 478 F.Supp.2d 340 (2007)

Background:Jewish Sephardic Yellow Pages, Ltd. (Plaintiff) sued DAG Media, Inc. (Defendant) over trademark issues related to the publication of yellow pages directories targeting the Jewish community. The Plaintiff claimed that the Defendant’s use of the term “Jewish Yellow Pages” infringed on its trademark rights and constituted unfair competition under the Lanham Act and New York state law.

Facts:

• The Plaintiff published a directory titled “Jewish Sephardic Yellow Pages,” targeting the Sephardic Jewish community.
• The Defendant published a similar directory under the name “Jewish Yellow Pages.”
• The Plaintiff claimed that the Defendant’s use of “Jewish Yellow Pages” caused confusion among consumers, leading them to believe that the directories were associated with or endorsed by the Plaintiff.

Legal Issues:

1. Trademark Infringement under the Lanham Act
2. Unfair Competition under New York State Law
3. Likelihood of Confusion

Court’s Analysis:

1. Trademark Infringement:

   • Ownership and Validity: The court examined whether the Plaintiff had a valid and legally protectable trademark in “Jewish Sephardic Yellow Pages.”
   • Likelihood of Confusion:Central to the court’s analysis was whether there was a likelihood of confusion between the Plaintiff’s and Defendant’s marks. The court applied the Polaroid factors to assess this, which include:
     • Strength of the mark
     • Similarity of the marks
     • Proximity of the products
     • Bridging the gap
     • Actual confusion
     • Defendant’s good faith
     • Quality of the Defendant’s product
     • Sophistication of the buyers

2. Unfair Competition:

   • The court considered whether the Defendant’s actions constituted unfair competition by misappropriating the Plaintiff’s goodwill and causing consumer confusion.

Holding:

• The court found that the Plaintiff had established the validity of its trademark and demonstrated a likelihood of confusion under the Polaroid factors.
• The court granted the Plaintiff’s motion for a preliminary injunction, enjoining the Defendant from using the term “Jewish Yellow Pages” in its directory publications.

Conclusion:The case illustrates the application of trademark law principles, particularly the likelihood of confusion analysis under the Lanham Act. The court’s decision underscores the importance of protecting trademark rights and preventing unfair competition in cases where there is a significant risk of consumer confusion between competing products or services.

 

Key Takeaway:In trademark disputes, establishing the likelihood of consumer confusion is critical for obtaining injunctive relief. Courts will thoroughly analyze factors such as the strength of the marks, similarity between them, and evidence of actual confusion to determine the outcome of such cases.

 

Case Summary: Jackpocket, Inc. v. Lottomatrix NY LLC

Court: United States District Court, Southern District of New York
Date: December 7, 2022
Citation: 645 F.Supp.3d 185 (2022)

 

Background:Jackpocket, Inc. (Plaintiff) filed a lawsuit against Lottomatrix NY LLC (Defendant) alleging trademark infringement, false designation of origin, and unfair competition under the Lanham Act. The dispute centered on the use of the name “Jackpocket” in connection with mobile applications for purchasing lottery tickets.

 

Facts:

• Jackpocket, Inc. operates a mobile application that allows users to purchase official state lottery tickets.
• The Plaintiff owns registered trademarks for “Jackpocket.”
• Lottomatrix NY LLC operates a competing mobile application under the name “Lotto.com.”
• The Plaintiff alleged that the Defendant used the term “Jackpocket” in online advertising campaigns, causing confusion among consumers and diluting the Plaintiff’s brand.

Legal Issues:

1. Trademark Infringement under the Lanham Act
2. False Designation of Origin under the Lanham Act
3. Unfair Competition under the Lanham Act

Court’s Analysis:

1. Trademark Infringement:

   • Ownership and Validity: The court confirmed that the Plaintiff owned valid, registered trademarks for “Jackpocket.”
   • Likelihood of Confusion:The court assessed the likelihood of confusion using the Polaroid factors:
     • Strength of the Mark: “Jackpocket” was deemed a strong mark due to its distinctiveness and recognition in the market.
     • Similarity of the Marks: The court found that the Defendant’s use of “Jackpocket” in its advertisements was likely to cause confusion with the Plaintiff’s mark.
     • Proximity of the Products: Both companies operated in the same market, offering similar services related to lottery ticket purchases.
     • Bridging the Gap: There was no gap to bridge as both companies were direct competitors.
     • Actual Confusion: The Plaintiff presented evidence of actual confusion among consumers.
     • Defendant’s Good Faith: The court considered whether the Defendant acted in good faith or intended to capitalize on the Plaintiff’s established brand.
     • Quality of the Defendant’s Product: The quality of the Defendant’s product was not directly at issue, but it could impact the Plaintiff’s reputation.
     • Sophistication of the Buyers: The court considered the level of care likely exercised by consumers in this market.

2. False Designation of Origin and Unfair Competition:

   • The court analyzed these claims similarly to the trademark infringement claim, focusing on whether the Defendant’s actions were likely to cause confusion or deceive consumers regarding the origin or sponsorship of the services offered.

Holding:

• The court found in favor of Jackpocket, Inc., concluding that the Plaintiff had demonstrated a likelihood of confusion sufficient to support its claims of trademark infringement, false designation of origin, and unfair competition.
• The court granted the Plaintiff’s motion for a preliminary injunction, prohibiting Lottomatrix NY LLC from using the term “Jackpocket” in its advertising and promotional materials.

Conclusion:This case highlights the rigorous analysis courts undertake to determine trademark infringement, emphasizing the importance of the likelihood of confusion among consumers. The decision reinforces the protection afforded to trademark holders against competitors who use similar marks in a manner likely to cause confusion or deceive the public.

 

Key Takeaway:For trademark holders, demonstrating the strength of their mark and providing evidence of actual confusion are crucial elements in securing legal protection against infringement. Courts will meticulously evaluate the likelihood of confusion, considering various factors to ensure that trademarks serve their primary function of identifying and distinguishing the source of goods or services.

 

 

Case Summary: Christmas House USA Inc. v. ChristmasLand Experience LLC et al., 2024 WL 1494687 (E.D.N.Y. 2024)

Court: United States District Court, Eastern District of New York
Case Number: 23-cv-8412 (LDH) (SIL)
Date: April 5, 2024

 

Plaintiff: Christmas House USA Inc.
Defendants: ChristmasLand Experience LLC, Michael Marra, Jolt Marketing, Brandon Havrilla, and Redmax Events, LLC

 

Background:
Christmas House USA Inc. initiated this lawsuit on November 13, 2023, against the Defendants, alleging trademark infringement and unfair competition under the Lanham Act. The Plaintiff has used the “CHRISTMAS HOUSE” trademark since 2020 to offer immersive Christmas-themed experiences. The Plaintiff’s trademark application is pending before the USPTO. The Defendants operate a similar Christmas-themed experience under the trademark “CHRISTMASLAND,” which the Plaintiff claims is confusingly similar to their own.

 

Prior Related Action:
In December 2022, the Plaintiff had previously sued the Defendants in a related action for theft of trade secrets, unfair competition, breach of contract, and tortious interference. The request for a temporary restraining order (TRO) and preliminary injunction was denied in the related action, which was subsequently settled.

 

Current Motion:
On November 29, 2023, the Plaintiff filed for a TRO and preliminary injunction to prevent the Defendants from using the “CHRISTMASLAND” trademark and trade dress.

 

Court’s Analysis and Decision:

1. Preliminary Injunction Standards:

   • The Court noted that preliminary injunctions and TROs are drastic remedies and the standards for granting them include establishing:
     1. Likelihood of success on the merits.
     2. Likelihood of irreparable harm if not granted.
     3. The balance of hardships tipping in favor.
     4. Public interest not being disserved.

2. Failure to Plead Trade Dress Claim:

   • The Plaintiff’s complaint did not adequately plead a claim for trade dress infringement, only mentioning trademark infringement and unjust enrichment. An amendment to add a trade dress claim through motion papers is not permitted.

3. Trademark Infringement Analysis:

   • For trademark infringement, the Plaintiff must show that their trademark is valid and likely to cause confusion. The Court found that the Plaintiff’s allegations focused on the similarities in the experiences offered by both parties, not on the infringement of the “CHRISTMAS HOUSE” trademark itself.
   • The Court was unconvinced that “CHRISTMAS HOUSE” is a protectable trademark, suggesting it is descriptive or suggestive and thus weak and possibly unprotectable.

4. Irreparable Harm:

   • The Plaintiff failed to demonstrate irreparable harm. The declarations provided to show actual confusion were insufficient, as they did not establish confusion among prospective purchasers and were considered speculative.

Conclusion:
The Court denied the Plaintiff’s motion for a TRO and preliminary injunction due to the failure to establish a protectable trademark and irreparable harm. The case highlights the necessity for a clear and compelling demonstration of trademark validity and consumer confusion for successful injunctive relief in trademark disputes.

Verna Law, P.C. handles trademark issues of all stripes – and can help you find a strong trademark to register.  We make knowing your trademark’s strength a part of every trademark opinion letter. Call us at 914-908-6757 or send an e-mail to anthony@vernalaw.com.