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:
All of these generic marks were previously trademarked, but have become generic.
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)
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.