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  1. #1
    Join Date
    Sep 2002
    Wales (UK)

    4 Gradations of trademark distinctiveness

    Came across this and thought it would be useful:

    Trademark law distinguishes four gradations of distinctiveness of marks, in
    descending order of strength: fanciful or arbitrary, suggestive, descriptive, and

    An arbitrary or fanciful mark bears no logical relationship to the product
    or service it is used to represent. Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178,
    1184 (5th Cir. 1980) (giving example of "Kodak").

    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. Id. (giving example of "Penguin" for refrigerators).

    A descriptive mark identifies a characteristic or quality of the service or product. Id.
    at 1183-84 (giving example of "Vision Center" for eyeglasses store).

    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." Soweco, 617 F.2d at 1183 (internal quotation marks
    omitted). By another measure, a generic name is the term by which the product or
    service itself is commonly known. See Nat'l Conference of Bar Exam'rs v.
    Multistate Legal Studies, 692 F.2d 478, 487 (7th Cir. 1982). 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. Blinded Veterans Ass'n v. Blinded
    Am. Veterans Found., 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)). 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." Soweco, 617 F.2d at 1183.

    A generic use of a word may not be registered as a trademark. Park 'N Fly,
    Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 194 (1985). 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. Am. Television & Communications Corp. v. Am. Communications &
    Television, Inc., 810 F.2d 1546, 1548-49 (11th Cir. 1987). 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." 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 (1938))). 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. 15 U.S.C. § 1052(f). 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. Conagra, Inc. v. Singleton, 743 F.2d 1508, 1513
    (11th Cir. 1984).

    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. See 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 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

  2. #2
    Join Date
    Oct 2002
    Excelent info, it did help me clear some misconceptions I had.

  3. #3
    Join Date
    Jan 2006
    So what is a Distinctive Mark?

  4. #4
    Join Date
    Oct 2002
    One entry found.

    Main Entry: dis·tinc·tive
    Pronunciation: \di-ˈstiŋ(k)-tiv\
    Function: adjective
    Date: 15th century
    1 a: serving to distinguish <the distinctive flight of the crane> b: having or giving style or distinction <a distinctive table setting>
    2: capable of making a segment of utterance different in meaning as well as in sound from an otherwise identical utterance

  5. #5
    Join Date
    Sep 2002
    Wales (UK)
    What is a distinctive mark?

    A distinctive mark is a trademark which is inherently distinctive (a fanciful, arbitrary or suggestive mark) and which is therefore entitled to the strongest protection under the trademark laws.

    but by definition a trademark has to be distinctive in its class to be capable of being registered.
    When using google for counts - use double quotes for usage counts for multiword terms and set "match type" to "exact" for all search volume lookups. Click here for more info

  6. #6
    Join Date
    Oct 2002
    Matt : did you get Wipoed ?

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