In order to start a business, any business, an owner must come up with a business name and/or logo, which will serve as a mark that represents the goods and/or services offered by their company. This name and/or logo should be strong in terms of trademarking. What does this mean? A trademark is “any word, name, symbol, or design, or any combination thereof, used in commerce to identify and distinguish the goods of one manufacturer or seller from those of another and to indicate the source of the goods”[1]. If the mark is unique, arbitrary or fanciful, the mark is considered strong. If the mark is generic, descriptive, deceptive or scandalous and immoral, the mark is considered weak.

Weak Marks

Generic marks
Generic marks are not available for trademark protection because generic marks are generally the very name of the product or service. For example, a company that sells bananas cannot use the word “Banana” as their brand name, or if a company sells athletic shoes, they cannot trademark the word “shoes” or ”sneakers”.
Descriptive
Descriptive marks describe the goods or services. An example of a descriptive mark would be if a computer software company used the name “Software Assistance” as their brand name. Descriptive marks cannot be registered without proof that the mark has developed secondary meaning in the eye of the consumer public. Secondary meaning is recognition among buyers, and can be shown by widespread advertising or a 5+ years term presence in the marketplace, or a survey from the relevant consumer population. Some descriptive marks that are known to the general public include After Tan, Chap Stick and Holiday Inn. Some marketing professionals prefer descriptive marks; so they put the marks on Supplemental Register for 5 years (when secondary meaning is presumed) and thereafter, convert the mark to Primary Register. If you do not know the difference between Supplemental and Primary Register, please look here:
International Trademark Association (“INTA”)
http://www.inta.org/INTABulletin/Pages/TheUSTrademarkRegistersSupplementalvsPrincipal.aspx

Furthermore, marks that are Surnames or Geographic Locations are considered descriptive in nature. A mark that is primarily merely a surname is not trademarkable and would only be registered on the Supplemental Registerinitially. Only after the mark acquires secondary meaning can the owner of the mark transfer it to the Primary Register. A few examples ofmarks, which were held by the USPTO as merely surnames includeDell (Dell Computers), Motts (Motts for baby food) and Marriot (Marriot for charitable services).

In addition, the USPTO prohibits registration on the Principal Register of marks that are primarily geographically descriptive of the goods or services offered. A geographic location may be any term identifying a country, city, state, continent, locality, region, area, or street (i.e. American Airlines).Nevertheless, when geographic terms are used in circumstances in which it is clear that they are meant to convey some meaning other than geographic origin, registration must not be refused on the basis of geographical descriptiveness (i.e. “Swiss cheese” and “Italian spaghetti”).

Deceptive
Another type of a weak mark is deceptive marks. Deceptive trademarks insinuate a component, ingredient or objective that would mislead consumers. For example, “Organic Aspirin” for a dietary supplement, which is not actually aspirin (Bayer Aktiengesellschaft v. StamatiosMouratidis). Additionally, deceptive marks that include geography are not protectable even if they are not material to the consumer’s purchase, such as, “Florida Orange Juice”, which is actually produced in California.

Scandalous and Immoral
The USPTO bars registration of trademarks that consist or comprise of “immoral, deceptive, or scandalous matter.”[2] In order to meet its burden and reject a trademark as scandalous or immoral, the USPTO must show that the mark is “shocking to the sense of truth, decency, or propriety; disgraceful; offensive; disreputable; . . . giving offense to the conscience or moral feelings; . . . [or] calling out [for] condemnation.”[3] Some examples of immoral or scandalous marks include, BULLSHIT, used in connection with a handbag line, 1-800-JACK-OFF, used for adult entertainment and DICK HEADS’, used in connection with restaurant and bar services.

Offensive Marks
Prior to a recent court holding, offensive marks were not trademarkable. An example of such a mark was “Khoran” for wines, which was refused registration with the USPTO because it was likely to offend the Muslim population when used to denote an alcoholic beverage. Nevertheless, on June 19, 2017, the Supreme Court held that the government may not refuse to register potentially offensive names because this law violates the First Amendment. Thus, offensive marks can be registered with the USPTO today.

Strong Marks

Arbitrary Marks
Arbitrary marks consist of words or logos which have a dictionary meaning before being adopted as trademarks, but which are used in connection with products or services unrelated to the dictionary meaning (i.e. “Apple” for computers).An apple is a type of fruit, and it couldn’t be used as a trademark in the agricultural sector. However, it can be registered as a trademark in association with computers. Arbitrary marks are registerable without showing secondary meaning and are considered the strongest type of trademark.
Fanciful Marks
Similarly, fanciful marks are made-up terms invented for the single purpose of functioning as a trademark. These terms do not have a dictionary meaning but are considered strong trademarks because of its uniqueness. Some examples of fanciful trademarks includeKodak, Pepsi, and Xerox.
Suggestive Marks
A suggestive mark is an indicative word that implies a characteristic of the product or service that is sold. However, suggestive marks are different from descriptive ones because the consumer has to use some imagination to understand what the product is. Examples of suggestive marks include Microsoft (software for microcomputers), Citibank (financial services), Coppertone (sunblock) and JetBlue (Airline).

Conclusion

Obtaining a strong trademark and branding that mark is key to a successful business. Many individuals fail to see that a trademark is one of the biggest assets of a company. In recent years, many companies that have filed for bankruptcy have only been able to profit off their trademarks. Without a strong trademark, a business owner lacks control over their brand and fails to protect their mark against infringers. Hence, making their business weaker and susceptible to lawsuits.
If you have any questions, please feel free to contact me at:
The Law Office of Biana Borukhovich, PLLC
(347) 450-1811
Biana@bb-lawfirm.com
Attorney Advertising

[1] Cornell Law School, Trademark, https://www.law.cornell.edu/wex/trademark

[2]15 U.S.C. § 1052(a). That provision bars registration of such marks on the U.S. Principal Register. See 15 U.S.C. § 1091(a) (“All marks capable of distinguishing applicant’s goods or services and not registrable on the principal register . . . except those declared to be unregistrable under subsections (a), (b), (c) and (d) of section 2 . . . may be registered on the supplemental register . . .”). See generally TMEP § 1203.01 (“Immoral or Scandalous Matter”).

[3]In re Mavety Media Gp. Ltd., 33 F.3d 1367, 1371 (Fed. Cir. 1994), citing In re Riverbank Canning Co., 95 F.2d 327 (C.C.P.A. 1938).
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