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 trademark definition.

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/services of the trademark owner at all. It is arbitrarily selected by the trademark own to designate the goods/services. 

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, (2) descriptive, (3) suggestive, 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 terms both because descriptive terms normally do not distinguish among similar products and because such terms should not be monopolized by a single use.

Generic marks are never entitled to 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 example of a fanciful trademark is Kodak.  Kodak has no meaning in any language and the mark was created for the sole purpose of branding cameras (of course, the goods/services have expanded over time). 

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.

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.

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.