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4 Types of Trademarks

Sabrina Meeran

01/31/2020

Trademark Law (PLST 48407)

Arbitrary or Fanciful

Trademarks

Arbitrary/Fanciful Trademarks

-strongest of all marks

-both inherently distinctive

-fanciful marks have no commonplace or dictionary meaning

-fanciful marks are entirely fabricated by owners of such trademarks

-Arbitrary marks with common usage & dictionary meaning BUT do not describe the goods/services

-Arbitrary marks are sort of "mismatched" to the service/good it represents

2 Cases regarding Arbitrary/Fanciful Marks

Fanciful Trademark Case

Kellogg Co. v. Toucan Golf, Inc, in 2013, the Appeals Court upheld the findings of the lower Court that the Toucan Golf mark did not infringe the Kellogg mark as they both deemed to be fanciful marks upong trademark application. The Kellogg Co. stated that Toucan Golf's mark would cause consumers to be confused. Kellogg lost their appeal due the court using a "liklihood of confusion test".

Cases

Arbitrary Trademark case

The case Abercrombie & Fitch v. Hunting World confirmed that arbitrary marks have a commonplace that is unrelated to it origin indicating function. So, the Court set up the "distinctiveness spectrum" to determine to determine what type of trademark a mark is.

Examples of Fanciful Trademarks

Examples of Arbitrary Trademarks

Examples

  • Amazon
  • Dove (soaps)
  • Tide (laundry soap)
  • Shell (gas station)
  • Puma (shoe brand)

  • Yahoo
  • Google
  • Neutrogena
  • Pepsi
  • Clorox

Suggestive Trademarks

Suggestive Trademarks

-considered inherently distinctive (like arbitary & fanciful marks)

-eligible for patent protect without showing of secondary meaning

-also strong but not as strong as fanciful/arbitrary

-do have descriptive aspect BUT rather suggest certain qualities of the goods or services

2 Cases regarding Suggestive Marks

Cases

1) Blinded Veterans Association (BVA) v. Blinded American Veterans Association (BAVF) both argued over thier associations acronym. The BVA stated that the BAVF was too similar to theirs and argued that it would confuse and decieve the public. The District Court desided that the BAVF had infringed upon BVA's trademark and vacated the case by passing it back down to lower Court. The lower Court then based thier decision off that of another Court's classification of suggestive marks, "terms that do not directly describe a product or service, but suggest some quality of the article" American Home Prods. Corp. v. Johnson Chem CO., 589 F.2d 103 (2nd Cir. 1978)

2) Another case between one product called Roach Motel (appellant) v. another called Roach Inn (appellee), where the appellant sought injunctive relief against appellee. The Court had to determine the kind of mark the two phrases were and found that "Roach Motel" was a suggestive mark. The case found that a term is suggestive if it requires imagination and awarded the appellant the injunctive relief.

Examples of Suggestive Trademarks

  • Chicken of the Sea (tuna)
  • Greyhound (bus service)
  • Netflix (tv & movie streaming)
  • Playstation
  • Burger King

Examples

Descriptive Trademarks

-describe a quality, function, characteristic, or ingredient of a product or service

-unlike suggestive, descriptive marks take NO imagination to understand what the product or service is

-can have secondary meaning

-ONLY protected if mark gains distinctiveness in mind of the consumer

-can gain or lose distinctiveness with time

-may describe any aspect of good or service

2 Cases regarding Descriptive Marks

Cases

1) In Kellogg Co. v. National Biscuit Co., 305 U.S. 111 (1938), the court found that the term "shredded wheat" was generic and had no secondary meaning. While Kellogg argues that shredded wheat referred to the "pillow shape" of the cereal but the Court disagreed and granted it no protection. The public identifies with a products secondary meaning. As stated in the previous slide, a word/phrase can lose or gain secondary meaning over time. Therfore, if the mark loses its secondary meaning then it also loses its trademark status (as seen in the above case).

2) Sara Lee Corp. V. Kayser-Roth Corp, 81 F.3d 455 (4th Cir. 1996), Sara Lee appealed lower courts decision that Kayser-Roth did not infringe on the L'Eggs trademark. The Circuit Court found the ruling to be erroneous and applied a confusion test to find that the L'Eggs TM was infringed upon and held a secondary meaning

Examples of Descriptive Trademarks

Examples

  • American Airlines
  • Pizza Hut
  • Best Buy
  • Microsoft Windows (windowing software)
  • Sharp (televisions)

Generic Trademarks

-commonly used as the name oe description of a kind of good

-may be synonymous with the good or service itself

-may sometimes be generic if the mark names a distinctive chracteristic of the genus of which the product in question is a specie

-INELIGIBLE for trademark protection under both state and federal law

-if mark becomes generic, it will lose its protection

-basic nature of a product

Generic Trademarks

Cases regarding General Marks

Cases

1) Case Induct-O-Matic Corp. (IOM) v. Inductotherm Corp (INDUCTO)., 747 F.2d 358. Court held that IOM's trademark was too similar to that of INDUCTO's. District Court said that IOM infringed on INDUCTO's trademark and violated the Lanham Act, 15 U.S.C. Section 1114. The district Court then looked to another Court to test the distinctiveness and amount of consumer confusion. (this shows importance to chose distinctive words/phrases to provide the applicant the most protection possible).

2)

Examples of General Trademarks

  • Band-Aid
  • Aspirin
  • Kleenex
  • Chapstick
  • Ice Pak

Examples

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