WHAT CAN FUNCTION AS A TRADEMARK?
A trademark may be defined as a word, term, name, symbol, device,
picture, design, numeral, monogram, abbreviation, acronym, slogan,
phrase, color (yellow for ironing board covers), a sound combination
(the Avon doorbell, NBC chimes of yesteryear), label, container (the
shape of the Coca Cola bottle), package, product shape (Goldfish
crackers, LifeSaver candy), geographical name, grade designation, or
any combination of these, as well as fragrances and number
combinations like telephone numbers or domain names. Apart from
generic terms, (defined below) trademarks can consist of almost any
conceivable subject matter.
DISTINCTIVENESS AND TRADEMARKS:
Not all marks qualify for legal
protection in court or for trademark registration. Only those which
are distinctive will be protected. Under the statutory
definition of "trademark", the word, term, name, symbol or device
must be used or intended to be used "to identify and distinguish"
the goods of the trademark owner from those offered, manufactured,
or sold by others, and the mark should indicate the source of the
goods. The use must, above all else, distinguish.
DISTINCTIVENESS TRANSLATES INTO
Here is the equation:
the greater the distinctiveness = the greater
the scope of protection
A distinctive mark will protect against use
by others of the same or a confusingly similar mark on the same
products, on related products, and even on those which may be
considered by some to be unrelated but which the public is likely to
assume originate from the trademark owner.
LEVELS OF PROTECTABILITY
may be ranked in the following categories - 1 is the best, 4 is the
1. ARBITRARY or FANCIFUL
= highly protectable
The most protectable, and
thus best, form of trademark is the "coined,"
arbitrary or fanciful mark. These marks can often be recognized by
their striking dissimilarity to other marks in a particular product
field. They usually are invented, coined,
meaningless designations which appear in no dictionaries and
which convey no information about the products or their uses.
Examples of fanciful word marks are EXXON, KODAK, XEROX, CITGO, DREFT
and ZUBAN. Marks in this category can easily be combined with
generic terms to form the complete mark, such as KODAK PAPER, DREFT
DETERGENT, etc. Arbitrary marks are generally terms which have
an understood meaning, but that meaning has no relationship to the
goods or services being offered, such as APPLE for computers,
PENGUIN for books, GUESS? for clothing.
a mark suggests certain qualities, functions or uses of
products but does not actually describe them. Examples of
suggestive marks are BULLDOG for picture hangers, CATERPILLAR for
tractors, DITTO for duplicating machines, IGLOO for coolers,
GREYHOUND for bus services, and TALON for slide fasteners. A suggestive mark is an
acceptable choice for a mark.
3. MERELY DESCRIPTIVE
= may be, or become, protectable trademark in certain circumstances
A mark is
considered merely descriptive if it describes an ingredient,
quality, characteristic, function, feature, purpose or use of the
specified goods or services. While descriptive marks can,
under certain circumstances be accorded protection, many times
there is a better choice that should be made (see first and
second levels above). A merely descriptive mark may be denied
protection for some of the following reasons: (1) to prevent the
owner of a mark from inhibiting competition in the sale of
particular goods, and (2) to maintain the right of merchants to
speak freely about their goods and services and to inhibit
infringement suits by the registrant against others who use the mark
when simply describing their own products.
4. GENERIC = not protectable trademark
Terms like "bike",
"clothes", "car", "food", "office" when applied to the
goods/services of the same name are generic. The public views such names not as
distinguishing the source of products, but rather as
designating the products themselves. Generic
marks should be avoided.
Tip & Tactics for Generating Names (by marketing and communications
guru Steve Rivkin)