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The More Distinctive the
Trademark, the Greater
the Protection.
By Mackenzie L. Dimitri
Apr 1, 2016
A common misconception for those new to trademarks or intellectual property law
is the level of protection afforded to various trademarks.
Trademarks, trade dress and other intellectual property are subject to
protections under the Lanham Act. See 15 U.S.C.A. §§ 1051 et seq. (West). In
order to determine if a mark is subject to the Lanham Act’s protections, the
courts apply various tests. For example, to determine if a mark is protected
under 15 U.S.C.A. §§ 1114 and 1125 (a), the plaintiff must demonstrate that it
has a valid mark, entitled to protection, and that purchasers are likely to be
confused as to the source of the goods in questions by the alleged infringement.
Flushing Bank v. Green Dot Corp., 2015 WL 5802385, at *14 (S.D.N.Y., 2015). In
applying this standard and determining whether there is a likelihood of
confusion, the court is guided by a balancing test set forth in Polaroid Corp.
v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir.1961).
The first Polaroid factor is arguably the most important. It relates to the
strength of the mark. To determine if the mark is strong, the court analyzes its
distinctiveness. To do this, the court classifies the marks, “in ascending order
of strength, as (1) generic; (2) descriptive; (3) suggestive; or (4) arbitrary
or fanciful.” Id. citing Star Indus., Inc. v. Bacardi & Co., 412 F.3d 373,
384–85 (2d Cir.2005). Generic marks are ineligible for protection and merely
describe a product using common terms. Id.
Examples of Generic Marks:
Escalator
Laundromat
Thermos
Trampoline
All of these generic marks were previously trademarked, but have become generic.
Descriptive Marks:
Descriptive marks are slightly more distinctive than generic marks. These marks
consist of words identifying qualities of the product. While they may not be
distinctive enough to justify protection under the Lanham Act, they are
protectable if they have acquired what is referred to as “secondary meaning.”
New World Solutions, Inc. v. NameMedia Inc., 2015 WL 8958390, at *20 (S.D.N.Y.,
2015)
Some examples of descriptive marks which have acquired secondary meaning are:
“Dollar a Day” – this mark was originally considered descriptive, as it
merely described the service of renting a car for a ‘dollar a day.’ It
was later held to have acquired secondary meaning, as it referred solely
to a particular car rental company.
“Marilyn” – in September 2015, the U.S. District Court for the Southern
District of New York determined that issues of fact remained to be tried
by Marilyn Monroe’s estate and an alleged infringer of the word
“Marilyn” as to whether that word had acquired secondary meaning,
holding that issue could not be determined on a motion to dismiss.
A.V.E.L.A., Inc. v. Estate of Marilyn Monroe, LLC, 2015 WL 5507147, at
*16 (S.D.N.Y.,2015)
Suggestive Marks:
A suggestive mark is more distinctive than a generic or descriptive mark.
Suggestive marks employ terms which “do not describe but merely suggest features
of a mark and thereby require the consumer to use his or her imagination,
thought or perception to reach a conclusion as to the nature of the goods.”
Flushing Bank v. Green Dot Corp., 2015 WL 5802385, at *14-15 (S.D.N.Y.,2015)
citing Thompson Med. Co. v. Pfizer Inc., 753 F.2d 208, 213 (2d Cir.1985); New
World Solutions, Inc. v. NameMedia Inc., 2015 WL 8958390, at *20 (S.D.N.Y.,
2015) (“Suggestive marks are those that are not directly descriptive, but do
suggest a quality or qualities of the product, through the use of imagination,
thought[,] and perception.”)
Examples of Suggestive Marks:
“Majestic Pearls” – In 2012, the U.S. District Court for the Southern
District of New York determined that the word “MAJESTIC” when used in
connection with the sale of pearls mark was suggestive because it
“suggest[s] the product but still require[s] imagination to grasp the
nature of the product.” Perfect Pearl Co., Inc. v. Majestic Pearl &
Stone, Inc., 887 F.Supp.2d 519, 533 (S.D.N.Y.,2012)
ORANGE CRUSH – this is an example of a suggestive mark, because it
suggests the product it describes (an orange-flavored beverage), but
requires some imagination. Moreover, the mark has acquired secondary
meaning as consumers equate it with the company and its product. Gruner
+ Jahr USA Pub., a Div. of Gruner + Jahr Printing and Pub. Co. v.
Meredith Corp., 991 F.2d 1072, 1076 (C.A.2 (N.Y.),1993) citing McCarthy,
Trademarks, 11:20 n. 13.
Arbitrary or Fanciful Marks:
Arbitrary or fanciful marks are the most distinctive and subject to the highest
protection. These are marks that do not communicate any information about the
product either directly or by suggestion. New World Solutions, Inc. v. NameMedia
Inc., 2015 WL 8958390, at *20 (S.D.N.Y., 2015).
Examples of arbitrary or fanciful marks are:
Advice when creating your trademark:
The best advice when creating a trademark or applying for trademark protection
is to simply be aware of what type of category your mark is likely to fall into.
The more distinctive your mark, the greater protection you may be afforded
against infringers in the future.