Trademark distinctiveness
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Trademark distinctiveness is an important concept in the law governing trademarks and service marks. A trademark may be eligible for registration, or registrable, if it performs the essential trademark function, and has distinctive character. Registrability can be understood as a continuum, with "inherently distinctive" marks at one end, "generic" and "descriptive" marks with no distinctive character at the other end, and "suggestive" and "arbitrary" marks lying between these two points. "Descriptive" marks must acquire distinctiveness through secondary meaning—consumers have come to recognize the mark as a source indicator—to be protectable.[1] "Generic" terms are used to refer to the product or service itself and cannot be used as trademarks.
The spectrum of distinctiveness
In
Fanciful marks
A fanciful / inherently distinctive trademark is prima facie registrable, and comprises an entirely invented or "fanciful" sign.[5] For example, "Kodak" had no meaning before it was adopted and used as a trademark in relation to goods, whether photographic goods or otherwise. Invented marks are neologisms which will not previously have been found in any dictionary.
Arbitrary marks
An arbitrary trademark is usually a common word which is used in a meaningless context (e.g. "Apple" for computers). Such marks consist of words or images which have some dictionary meaning before being adopted as trademarks, but which are used in connection with products or services unrelated to that dictionary meaning. Arbitrary marks are also immediately eligible for registration. Salty would be an arbitrary mark if used in connection with e.g. telephones such as in Salty Telephones, as the term "salt" has no particular connection with such products.
Suggestive marks
A suggestive mark tends to indicate the nature, quality, or a characteristic of the products or services in relation to which it is used, but does not describe this characteristic, and requires imagination on the part of the consumer to identify the characteristic. Suggestive marks invoke the consumer’s perceptive imagination. Examples of a suggestive mark are
Descriptive marks
A descriptive mark is a term with a dictionary meaning which is used in connection with products or services directly related to that meaning.[5] An example might be Salty used in connection with saltine crackers or anchovies. Such terms are not registrable unless it attains a 'secondary meaning', such that the mark is so distinctive that people associated it with specific brand name in the marketplace.
Generic terms
A generic term is the common name for the products or services in connection with which it is used, such as "salt" when used in connection with sodium chloride. A generic term is not capable of serving the essential trademark function of distinguishing the products or services of a business from the products or services of other businesses, and therefore cannot be afforded any legal protection.
Assessing distinctiveness
In trademark litigation, courts are most frequently asked to distinguish between suggestive and descriptive marks on the one hand, and between descriptive and generic marks on the other. This is because suggestive marks, like fanciful and arbitrary marks, are presumed to be entitled to trademark protection, while descriptive marks are entitled to protection if they have become known as representing the producer of the goods, and generic marks can never receive protection.[13] It can be seen from the examples above that the distinctive character of a term is closely related to the products or services in relation to which the term is used.
A general method for assessing the distinctive character of a mark is to consider a consumer's reaction to a mark.[5] The mark may only be inherently registrable if the consumer has never encountered the mark before. On the other hand, the mark is unlikely to be inherently registrable if it informs him about any characteristic of the relevant products or services (e.g. whether they are delicious, large, spicy, black, or sweet, in the case of fruit). In any other case the mark may not be registrable.
Another example of a descriptive mark would be a geographical word or phrase that merely indicates the origin of the product or service. For example,
Therefore marks that identify or describe a product or service, or that are in common use, or that are used as geographical indications, generally cannot be registered as trademarks, and remain in the public domain for use by anyone.[5] For example, a generic term such as "apple", or descriptive terms such as "red" or "juicy" could not be registered in relation to apples.
Primary consideration in the selection and use of trademarks should be given to marks which are inherently distinctive, as they possess the strongest distinctive character and do not require evidence of use to establish acquired distinctiveness. A fanciful, arbitrary, or suggestive term can be inherently distinctive and registrable without proof of acquired distinctiveness. Although these categories are most easily applied in relation to trademarks comprising words, the same general principles are applied in relation to all kinds of trademarks. For example, a pine tree shape is descriptive when used on pine-scented products.
Acquired distinctiveness
A trademark with no distinctive character (i.e. a mark which is not inherently distinctive) is prima facie unregistrable.[15] However, most jurisdictions may still allow such marks to be registered if the trademark owner can demonstrate, typically by reference to evidence of use, that consumers in the marketplace exclusively associate the mark, as used on the identified goods or in connection with the identified services, with a particular commercial origin or source (i.e. the trademark owner). "Use" may include authorized use by a licensee or other party. If the trade mark office is satisfied that the evidence demonstrates that a mark has "acquired" distinctive character as a matter of fact, then the mark may be accepted for registration on the basis of acquired distinctiveness.
The nature and extent of acceptable evidence of use varies between jurisdictions, although the most useful evidence usually includes sales figures, details of advertising and promotional expenditure, and examples of promotional material. Consumer surveys may also help establish that consumers chiefly associate an otherwise non-distinctive mark with the trademark owner and its products or services. Generally, evidence of use may only be acceptable or relevant if it covers a certain period of time (e.g. three years prior to the filing date of the trademark application) and originates from within the jurisdiction where registration is sought.
The terminology of acquired distinctiveness is accepted in the
The essential function of a trademark is to exclusively identify the commercial source or origin of products or services, such that a trademark, properly called, indicates source or serves as a badge of origin. The use of a trademark in this way is known as trademark use. Certain exclusive rights attach to a registered mark, which can be enforced by way of an action for trademark infringement, while unregistered trademark rights may be enforced pursuant to the common law tort of passing off.
Trademark rights generally arise out of the use and/or registration (see below) of a mark in connection only with a specific type or range of products or services. Although it may sometimes be possible to take legal action to prevent the use of a mark in relation to products or services outside this range (e.g. for passing off), this does not mean that trademark law prevents the use of that mark by the general public. A common word, phrase, or other sign can only be removed from the public domain to the extent that a trademark owner is able to maintain exclusive rights over that sign in relation to certain products or services, assuming there are no other trademark objections. For a case study in both concepts, see Apple Corps v Apple Computer.
Maintaining distinctiveness
If a court rules that a trademark has become "
For example, the
The proper use of a trademark means using the mark as an
See also
- Ghost marks
- Glossary of legal terms in technology
- International Trademark Association
- Madrid system
- Proper adjective
- Service marks
- Trade dress
- Trademark attorney
- Trademark dilution
- Unregistered trademark
References
- OCLC 51098248.
- Abercrombie & Fitch Co. v. Hunting World537 F.2d 4 (2nd Cir. 1976)
- ^ "Trademarks vs. Generic Terms". International Trademark Association. Retrieved 2013-01-23.
- ^ "Abercrombie Classification Law & Legal Definition". US Legal, Inc. Retrieved 2013-01-23.
- ^ OCLC 769888924.
- ^ "In re NetEnterprise, Inc., Serial No. 76219917" (PDF). USPTO. 2005-04-20.
- ^ "'NETENTERPRISE' Generic For An Internet Business, Says TTAB". TTABlog. 2005-05-17.
- ^ "Aspirin: Health benefits, uses, and risks". www.medicalnewstoday.com. Retrieved 2020-04-12.
- ^ CYBERPUNK - Trademark Details - Justia
- ^ CYBERPUNK - European Union Intellectual Property Office
- ^ Frank, Allegra (6 April 2017). "The Witcher studio assuages concerns over 'Cyberpunk' trademark". Polygon. Vox Media. Retrieved 14 May 2020.
- ^ "ASPIRIN Brand or Aspirin Tablets? Avoiding the "Genericide" Headache in the United States". www.inta.org. Retrieved 2020-04-12.
- ^ Miller, Matthew (August 13, 2020). "Spectrum of Distinctiveness for Trademarks".
- ^ Waters, Baldwin Shelston; Angela Sutton (July 2001). "Trading on a good name". Findlaw.
- OCLC 2647046.
- ^ "How Do I Use a Trademark Properly?". Information and Publishing FAQ. International Trademark Association. Retrieved 2006-09-03.
- ^ "Always Use a Trademark as an Adjective, Followed by the Appropriate Noun Descriptor(s)". Trademarks and Brands. 3Com Legal. Retrieved 2006-09-03.
- ^ "Permissions and trademark guidelines". Adobe. Retrieved 2006-09-03.
- ^ Pullum, Geoffrey K. "A Guide to Proper Trademark Use". Retrieved 2006-12-05.
- ^ "Farewell to Zimmerman's Research Guide". www.lexisnexis.com. Retrieved 2019-09-12.
External links
- Canadian Trademark Law FAQ