Advanced Trademark Reading

Coined Terms

Also referred to as "fanciful" words, these are terms that are invented for the sole purpose of serving as trademarks. Examples include KODAK for photographic equipment, UNIX for a computer operating system, REEBOK for shoes, and XEROX for photocopying equipment. Coined marks receive the highest level of protection, because a coined word has no known meaning and therefore has no possible association with the good or service for which it is used. As a result, infringers of these marks are hard pressed to provide any plausible explanation fo r their use the mark, leaving the impression that the real reason was in fact a blatant attempt to trade off the goodwill generated by the owner of the trademark.

Arbitrary Terms

These are names that exist in popular vocabulary, but have no logical relationship to the goods or services for which they are used. The pairing of the mark with the particular category of goods or services should appear to be random. Examples include APPLE for computer, BEEFEATER for gin, COMET for kitchen cleaner, and JAGUAR for a car. Whether a word is arbitrary or not has everything to do with the context in which it is used. Obviously, the term "apple" used to sell the rounded edible pome fruit of a tree of the rose family is a generic term, and not trademarkable. Similarly, use of the phrase "Comet Watch" for a newsletter describing the activities of celestial bodies with long tails pointing away from the sun would not be considered arbitrary, but rather suggestive. 

Suggestive Terms

Suggestive trademarks suggest rather than describe qualities of the underlying good or service. "Suggestive" and "descriptive" are not mutually exclusive, since there must be some description in almost any suggestion. However, by going beyond "mere description" the law elevates a suggestive term into the valuable category of "inherently distinctive." Courts have clarified this fine distinction by stating a mark is suggestive if it requires imagination, thought and perception to determine the nature of goods or services in question. Examples of suggestive marks include: ACOUSTIC RESEARCH for stereo loudspeakers, HABITAT for home furnishings, GREYHOUND for bus transportation services, and Q-TIPS for cotton-tipped swabs.  

 Trademarks above this line are inherently distinctive

 
Descriptive Terms

Trademarks that describe the ingredients, qualities, features, purpose or characteristics of a product or service. These marks are not inherently distinctive, and thus do not receive trademark protection unless they acquire distinctiveness through secondary meaning. Even if they qualify for trademark protection, descriptive marks are the weakest marks possible, and do not receive as broad of legal protection as suggestive, arbitrary and fanciful marks. Examples of descriptive marks include: BEEF & BREW for a restaurant, LASERGAGE for a laser measurement device, PIZZAZZ for pizza, and WORLD BOOK for encyclopedias. In contrast to suggestive marks, a mark that is merely descriptive immediately conveys knowledge of ingredients, qualities, or characteristics with no imaginative leap required. If a composite mark is not 100% descriptive, then the mark as a whole is not "merely descriptive."

Generic Terms

These are words or symbols that describe the product or service itself as a category, rather than distinguish between competing versions of the product or service. For example, "shredded wheat" is a generic term that refers to the category of breakfast cereals that are composed of layers of crunchy wheat strips molded together into a pillow-type shape. This cereal may be manufactured by Kellogg's, Post or others., and each manufacturer is free to use the term "shredded wheat" to advertise their version of the cereal. To prevent them from using "shredded wheat" would mean they could not equally compete with regard to this product. Thus, generic words are not protected as trademarks precisely because to do so would be akin to granting a monopoly in the product itself, not in a word or symbol.