What Types of Trademarks Are the Easiest to Defend?
Types of trademarks fall into one of five categories based on their distinctiveness. The categories are also known as the “Abercrombie Classification” from the seminal case Abercrombie & Fitch Co. v. Hunting World, 537 F.2d 4 (2nd Cir. 1976).
The more distinctive a mark, the easier it is to defend and the better brand recognition a client will have for their product.
The five categories are:
- Descriptive, and
A fanciful mark is an easy one to protect. The United States Patent and Trademark Office (“USPTO”) says, “[f]anciful marks comprise terms that have been invented for the sole purpose of functioning as a trademark or service mark. Such marks comprise that are either unknown in the language (e.g. Pepsi, Kodak, and Exxon) or are completely out of common usage (e.g. Flivver).”
Stated another way, if you made up the word, then it is “fanciful.” Along with the examples that the USPTO gave, another great one is “Ikea” which is the initials of the company’s founder plus to first letters of the town he grew up in.
Arbitrary marks are also inherently distinctive. An arbitrary mark is a usual word but is used in a way to make the mark meaningless. The best example of this is Apple Computers. Apple is obviously a common word, but really has nothing to do with computers. This “meaninglessness” is what makes arbitrary marks strong. Jaguar used for cars and Camel for cigarettes are other examples of arbitrary marks.
The USPTO defines suggestive marks as, “marks [that] when applied to the goods or services at issue, require imagination, thought, or perception to reach a conclusion as to the nature of those goods or services.” Examples of a suggestive mark would be “Speedi Bake” for frozen dough, “Noburst” for liquid antifreeze, and “Dri-Foot” for anti-perspirant deodorant for feet.
Arbitrary marks, fanciful marks, and suggestive marks can be registered with the USPTO without proving “secondary meaning,” which leads to the next category: descriptive marks.
A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services. In re Gyulay, 820 F.2d 1216 (Fed. Cir. 1987). Descriptive trademarks only achieve federal trademark protection when they have acquired a “secondary meaning,” which usually takes years and a large advertising budget. Some examples are “Apple Pie” for potpourri and “Bed and Breakfast Registry” is just descriptive of lodging services. Obviously, if a mark is on the border between descriptive and suggestive, one would want the USPTO to determine it to be suggestive and not merely descriptive.
This type of trademark cannot be protected because it is just a description of a category or class name for goods or services. Therefore, generic terms cannot function as trademarks and are considered “free use,” which the USPTO believes benefits consumers.
Interestingly, former trademarks can become “generic” and therefore no longer afforded trademark protection. Some examples are aspirin, cellophane, escalator, kerosene, trampoline and videotape.