by Goeun Son
Previously, you learned trademark basics from what a trademark is to how it protects your mark. As you know, any word, name, or symbol are protected under trademark. But they should distinguish your goods or services from those of others and indicate the source of the goods or services. The distinctiveness of a logo can be categorized into five categories. From most distinctive to least distinctive, these categories are
1) fanciful 2) arbitrary 3) suggestive 4) descriptive 5) generic
Fanciful, arbitrary, or suggestive marks are considered distinctive enough to function as trademarks. On the other hand, descriptive marks can function as a trademark only if it has obtained secondary meaning. Generic marks can never be a trademark. The strength of a mark is determined in part by where it falls on this spectrum. Fanciful marks are considered stronger than suggestive marks, and therefore are granted greater protection. Let’s see what distinguishes each category from the others.
Fanciful marks are invented for the sole purpose of functioning as a trademark and have no other meaning than acting as a mark. Fanciful marks are considered to be the strongest type of mark.
Example: Exxon, Kodak, Xerox
Arbitrary marks utilize a device having a common meaning that has no relation to the goods or services being sold.
Example: Apple (computers, smartphones), Camel (cigarettes), Shell (gas stations)
Those marks suggest a quality or characteristic of the goods and services. Although suggestive marks are not as strong as fanciful or arbitrary marks, suggestive marks are more common due to the advantage of tying a mark to the product in a customer’s mind. Suggestive marks are often difficult to distinguish from descriptive marks, since both are intended to refer to the goods and services. Suggestive marks require some imagination, thought, or perception to reach a conclusion as to the nature of the goods. Descriptive marks allow consumers to reach that conclusion without such imagination, thought or perception. Putting this distinction into practice is one of difficult and disputed areas of trademark law.
Example: Microsoft (microcomputer software), Airbus (aeronautics company), KitchenAid (home appliance)
Those marks merely describe the services or goods on which the mark is used. Descriptive marks are not a mark, since it does not serve to identify the source of the goods or services. No trademark rights are granted to merely descriptive marks. However, it is possible for descriptive marks to become distinctive by achieving secondary meaning. Although the mark is on its face descriptive of the goods or services, consumers recognize the mark as having a source indicating function. Once it can be shown that a descriptive term or phrase has achieved this “second meaning”, a trademark is developed. Secondary meaning can be achieved through long term use, or large amounts of advertising and publicity. The acquisition of secondary meaning is often proven through consumer surveys to show that consumers recognize the mark as a brand.
Example: Windows (software), Sharp (televisions)
Generic marks actually name a product and do not function as a trademark. Unlike descriptive marks, generic devices will not become a trademark even if secondary meaning can be proven in the mind of consumers. A valid trademark can become generic if the consuming public misuses the mark sufficiently for the mark to become the generic name for the product. The examples of former trademarks that became the generic name for a product are ASPIRIN and CELLOPHANE.