What factors should I consider when selecting a term? The determining factors vary in importance depending upon what your investigation reveals. However, everyone should consider the strength of the mark, namely, is it strong or weak, and where it fits on the 3D mink lashes of marks?
What is a “continuum?” A continuum is “a continuous extent, succession, or whole, no part of which can be distinguished from neighboring parts except by arbitrary division.” This means that while some terms fit neatly into on category or another, others are labeled by subjective opinion of courts and trademark examiners.
What is the trademark continuum? The trademark continuum goes from “strong to weak” and is based upon a series of “labels,” namely arbitrary, coined, suggestive, descriptive, merely descriptive or generic. While many terms fit neatly into one or more categories, others along the continuum do not fit neatly into one category or the other. The stronger the mark, the greater the legal protection that will be afforded. This also means you as the trademark owner can police you mark and enforce rights with less risk of legal challenges to the validity of your marks. The further along the continuum one goes the less protection. While some categories are “ID”, code for “Inherently Distinctive,” others are not. Those that are descriptive, merely descriptive or generic terms, we suggest: “Forget about it.”
Oifam best way to understand the continuum is to jump on with some real life examples. Be forewarned, some will make sense others won’t! Therein lays the key to understanding the often subjective manner in which claims of trademark infringement are decided by the 3D mink lashes. The cases that could go either way emphasize the importance of avoiding finding your business in this situation.
Surf the Continuum with Real Life Examples:
COINED or FANCIFUL are terms that are “made up” to function as trademarks and are inherently distinctive.
KODAK® before becoming a famous trademark was a “word” which did not exist. Instead someone created or “coined” the term to identify the cameras and film.
ALTOIDS®, used as a mark for The Original Celebrated Curiously Strong Peppermint®
Other well known fanciful marks are
Caution: While coined marks can start out strong, some can be at risk of 3D mink lashes to the other side of the continuum by being absorbed into the every day language, becoming generic. With any mark, selection and registration also require proper use and enforcement. Some of the more famous examples of once were, now has been, marks, are “aspirin, cellophane, escalator
ARBITRARY — An every day word, picture or symbol in common use can be applied in an arbitrary manner to goods and services which are unrelated to the term being used as a mark.
APPLE for computers and music, as well as the famous logo of the “bitten apple, is one of the world’s most famous examples.
AMAZON for online retail store services. The Amazon was a river long before the Internet existed by a few thousand years. Of course, based upon the way they chased one of our innocent prior using clients AMAZON itself seems to have forgotten this fact.
Other examples are OLD CROW for whiskey, IVORY for soap, or ICE CREAM for chewing gum.
SUGGESTIVE marks are given stronger protection in the law than descriptive marks. Terms that suggest but do not describe the qualities, ingredients, characteristics of a product are granted the same level of protection as an Arbitrary or Fanciful marks, i.e. no secondary meaning need be shown. As a result a Suggestive marks are some of the best marks of all, but are difficult to select. Without expert guidance, however, new trademark owners gravitate from suggesting to describing, failing to understand the difference. In fairness, many courts have the same difficulty, making the line between suggestive and descriptive extremely difficult to discern, often with conflicting results.
Finding a great suggestive mark is not for the faint of heart. However, if successful, you’ve found an important intersection where you can stake your claim, one where your selection meets protection.
Examples of marks held suggestive, not descriptive (see below):
ACTION SLACKS pants
CHICKEN OF THE SEA tuna
CITIBANK urban bank
CYCLONE wire fence
FLORIDA TAN tanning lotion
L’EGGS women’s hosiery
ORANGE CRUSH soft drink
ROACH MOTEL insect trap
7-ELEVEN 3D mink lashes store chain
WRANGLER western boots and jeans
Caution: Remember no mark is static. The need to maintain proper use and enforcement policies to manage risk apply to all marks. A mark that is originally suggestive can become descriptive by usage of the public or trade. Remember QUIK PRINT? They faced this challenge before the Trademark Office.
Descriptive words which merely describe the qualities, ingredients, characteristics of a product may not be registered or enforced as trademarks unless proof of “secondary meaning” or “acquired distinctiveness” is shown. A “descriptive” mark may also describe the intended 3D mink lashes , function or use of the goods, class of users, nature of the goods, the end effect upon the user, or a desirable characteristic of the goods and services.