Trademarks protect the originator of a particular mark from its use by others. Goods and services may be trademarked. Once something is trademarked, only the person with the trademarks may use that mark. Others may not. Additionally, others may not use a mark so similar to an existing trademark that the new mark could be confused for the existing trademark. Sometimes this is a subjective determination and is difficult to make.
Too Similar to an Existing Trademark?
In order to determine whether a new mark is so similar to an existing trademark that the mark may be confused as the existing trademark, both the new mark and the existing trademark must be analyzed. Several aspects of the new mark and existing trademark will be considered. The following comparisons and analysis should take place:
- Compare the look of the new mark with the look of the existing trademark
- Compare the market for the new mark with the market for the existing trademark
- Analyze how often the new mark has been confused for the existing trademark
- Compare the customers for the mark with the customers for the existing trademark
- Analyze the quantity of other similar marks in the market
- Analyze the intention of the owner of the new mark and whether that person intended the new mark to be confused for the existing trademark
- Analyze the degree of care the customers of each mark may use
- Analyze the strength or recognition of the existing trademark
Trademarks Must be Distinctive
In order to obtain a trademark, the mark must be distinctive. There are four categories of consideration in determining whether a mark is distinctive and may give rise to a trademark. Those four categories are: (1) arbitrary or fanciful, (2) suggestive, (3) descriptive, and (4) generic.
Arbitrary or Fanciful
An example of an arbitrary or fanciful mark would be a word that is made up, or fictitious. It doesn’t describe a particular good or service. Another example could be a common word used in an unfamiliar way, such as “Apple” used as a trademark of a computer company. “Apple” doesn’t describe a computer, but it is a common word. When used in connection with computers, “Apple” is a common word used in an unfamiliar way. Arbitrary or fanciful marks are considered strong marks and are protected by trademark laws.
Suggestive marks are less strong that arbitrary or fanciful marks, but are inherently distinctive. A suggestive mark implies a characteristic or quality of the good or service to which it is attached. A suggestive mark doesn’t describe the features of the good or service, but it suggests them. In order for the consumer to realize the suggestion, the consumer must use some imagination or logical reasoning. An example of a suggestive mark is “Palm” used as a trademark of a company selling personal digital assistants (“PDAs”). “Palm” does not describe an electronic device. It may, however, suggest something that fits in a person’s palm. Suggestive marks are protected by trademark laws.
Descriptive marks describe some aspect of the characteristics of the good or service. The average consumer easily understands the connection between the mark and the good or service. An example of a descriptive word, is the word “apple” in the juice company trademark “CranApple.” For the average consumer, this clearly means a cranberry-apple combination. Other examples include the use of a geographic term or location in the name of a good or service from that area. A person cannot obtain a trademark on a descriptive word unless the word achieves secondary meaning in the mind of consumers. Secondary meaning is achieved when the public associates that word with a single source of a good or service even though the mark itself does not distinguish the good or service. If the mark is unregistered, the plaintiff must prove secondary meaning.
Generic marks do not identify the source of a good or service. Generic marks are common words consumers use to describe a good or service. “Juice” is a generic word when referring to a drink. “Apple” is a generic word when referring to a fruit. A person cannot obtain a trademark on a generic mark. A word can become generic and then it loses its trademark. The work “aspirin” used to be a trademark for “acetyl salicylic acid” but is now become a generic term and lost its trademark.