Trademark registration distinguishes four gradations of distinctiveness of marks, in descending order of strength:
- fanciful or arbitrary
An arbitrary or fanciful mark bears no logical relationship to the product or service it is used to represent.
A suggestive mark refers to some characteristic of the goods, but requires a leap of the imagination to get from the mark to the product.
A descriptive mark identifies a characteristic or quality of the service or product.
There are several different approaches to defining "generic." By one test, a generic name refers to "a particular genus or class of which an individual article or service is but a member." By another measure, a generic name is the term by which the product or service itself is commonly known.
Still other courts say a generic name depicts the product or service as a whole, rather than any particular feature, quality, or characteristic of the whole.
Genericness lies not in the term itself, but in the use of the term: "A word may be generic of some things and not of others: 'ivory' is generic of elephant tusks but arbitrary as applied to soap."
A generic use of a word may not be registered as a trademark. A descriptive name, on the other hand, though not inherently distinctive, can acquire distinctiveness or "secondary meaning" by becoming associated with the proprietor's product or service. A name has acquired secondary meaning when "the primary significance of the term in the minds of the [consuming] public is not the product but the producer."
A proprietor can make a prima facie showing of "secondary meaning" by showing that the name has been used in connection with the proprietor's goods or service continuously and substantially exclusively for five years. Whether a name has attained secondary meaning depends on the length and nature of the name's use, the nature and extent of advertising and promotion of the name, the efforts of the proprietor to promote a conscious connection between the name and the business, and the degree of actual recognition by the public that the name designates the proprietor's product or service.
Courts have generally held that a term used generically cannot be appropriated from the public domain; therefore, even if the name becomes in some degree associated with the source, a generic mark cannot achieve true secondary meaning.
Note that while a phrase may be generic and thus not suitable for trademark registration, its initials may obtain approval for registration as a trademark. Abbreviations of generic words may become protectable if the party claiming protection for such an abbreviation shows that the abbreviation has a meaning distinct from the underlying words in the mind of the public.
- Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178, 1184 (5th Cir. 1980) (giving example of "Kodak").
- Soweco, 617 F.2d at 1184 (giving example of "Penguin" for refrigerators).
- Soweco, 617 F.2d at 1183-84 (giving example of "Vision Center" for eyeglasses store).
- Soweco, 617 F.2d at 1183 (internal quotation marks omitted).
- Nat'l Conference of Bar Exam'rs v. Multistate Legal Studies, 692 F.2d 478, 487 (7th Cir. 1982).
- Blinded Veterans Ass'n v. Blinded Am. Veterans Found., 277 U.S. App. D.C. 65, 872 F.2d 1035, 1039 (D.C. Cir. 1989) (citing Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 790 (5th Cir. 1983)).
- Soweco, 617 F.2d at 1183.
- Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 194, 105 S. Ct. 658, 83 L. Ed. 2d 582 (1985).
- Am. Television & Communications Corp. v. Am. Communications & Television, Inc., 810 F.2d 1546, 1548-49 (11th Cir. 1987).
- Id. at 1549 (quoting Vision Ctr. v. Opticks, Inc., 596 F.2d 111, 118 (5th Cir. 1979) (quoting Kellogg Co. v. Nat'l Biscuit Co., 305 U.S. 111, 118, 59 S. Ct. 109, 83 L. Ed. 73, 1939 Dec. Comm'r Pat. 850 (1938))).
- 15 U.S.C. § 1052(f).
- Conagra, Inc. v. Singleton, 743 F.2d 1508, 1513 (11th Cir. 1984).
- Soweco, 617 F.2d at 1185 n.20 (secondary meaning not relevant to generic mark); Vision Ctr. v. Opticks, Inc., 596 F.2d 111, 115 & n. 11 (5th Cir. 1979) ("Most courts hold that a generic term is incapable of achieving trade name protection"; courts refuse to allow proof of secondary [*12] meaning to elevate generic term to trademark status); see also Schwan's IP, LLC v. Kraft Pizza Co., 460 F.3d 971, 974 (8th Cir. 2006); Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 790-91 (5th Cir. 1983); Nat'l Conference of Bar Exam'rs, 692 F.2d at 487; 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 15:24 (4th ed. 2007). But see Am. Heritage Life Ins. Co. v. Heritage Life Ins. Co., 494 F.2d 3, 11 (5th Cir. 1974) (generic name will be protected if it acquires secondary meaning).
- G. Heileman Brewing Co. v. Anheuser-Busch, Inc., 873 F.2d 985, 993-94 (7th Cir. 1989) ("heavy burden" on trademark claimant seeking to show an independent meaning for initials of descriptive words apart from the fact that they are abbreviations for the descriptive words); 2 McCarthy, supra, § 12:37 (distinguishing between abbreviations "which still convey to the buyer the original generic connotation of the abbreviated name" and those which are "not recognizable as the original generic term"). But cf. Anheuser-Busch, Inc. v. Stroh Brewery Co., 750 F.2d 631, 635-36 (8th Cir. 1984) (abbreviation of generic words protectable if "some operation of the imagination is required to connect the initials with the product"); Modern Optics, Inc. v. Univis Lens Co., 234 F.2d 504, 506, 43 C.C.P.A. 970, 1956 Dec. Comm'r Pat. 350 (C.C.P.A. 1956) ("[I]nitials cannot be considered descriptive unless they have become so generally understood as representing descriptive words as to be accepted as substantially synonymous therewith.").
- Welding Servs. v. Forman, 2007 U.S. App. LEXIS 29184 (11th Cir. 2007)