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Trademark law gives companies
the exclusive right to use a given name or design, called
a “mark,” for the purpose of identifying the source
the of that company’s goods or services. Trademark law
is an incentive-based system. Because it gives companies
the exclusive right to use a mark in connection with
certain goods or services, the company can create a brand
that is recognizable by the consuming public. That
trademark would be associated with and incorporated into
every advertisement the company runs for its goods or
services. Repetition of those advertisements containing
the trademark causes consumers to associate the mark with
the goods and, with enough repetition, consumers buy the
goods.
A brief, but related,
digression. We all know that if you see a product
advertised frequently enough, the product will sell. You
might even be one of the people who buys the product. The
thinking process by which you reached the decision to buy
the product is not an intellectual, logical process.
It’s a function of the way the human mind works.
Continually hearing a repeated message makes the message
more familiar, more real, and, eventually, more true. As
the adage says, “even the boldest lie becomes the truth
if you scream it loud enough and long enough.” I call
this the “Lie = Truth” Adage. Sadly, I frequently
encounter the “Lie = Truth” Adage in litigation. I
also know of some politicians and terrorist masterminds
who are experts at exploiting this fact of human nature.
Back to trademarks. The
advertising departments at most companies know the “Lie
= Truth” Adage can be very successful in advertising.
The cynic would pump his fist in the air yell “Down with
the corporations, and power to the people! All the
corporations care about is taking our money at all
costs!” While we can point to some recent examples that
might make it challenging to argue against this viewpoint,
as to the overwhelming, vast majority of companies, that
view simply cannot be supported.
Trademark law creates very
strong incentives for companies to make the highest
quality product possible and to advertise their merits and
attributes accurately. Aside from the fact that companies
invest anywhere from tens of thousands to millions of
dollars into their trademark(s), all it takes is one bad
product line to tarnish a companies image in the mind of
the consumers who buy their products. Both of these
factors hit companies where it hurts them most: in the
pocketbook. So, while companies clearly have to perform a
balancing act of creating a high quality product, keeping
costs down, and pulling in as many purchasers as possible,
they have very strong incentives to create a quality
product that they will associate with their trademark.
To be eligible for any
level of trademark protection, a mark must be
“distinctive” and not merely “descriptive” of the
goods or services. Whether a mark is distinctive and
“how” distinctive or strong the mark is can be
determined by a sliding scale. Marks can be (1) fanciful;
(2) arbitrary; (3) suggestive; (4) descriptive; or (5)
generic. Whether a particular mark is protected by
trademark law depends on the strength category into which
it falls.
A fanciful mark is one that
is invented for the sole purpose of being a trademark. For
example, EXXON is a fanciful mark. It is a word that does
not exist in the English language and was created only for
the purpose of identifying the oil and gas company.
An arbitrary mark is
typically an existing word that is arbitrarily applied to
a product or service that has nothing to do with the word.
For example, the mark APPLE as applied to sales of
computers.
A suggestive mark is a mark
that suggests a quality or characteristic of the goods or
services. Suggestive marks require some level of
imagination to bridge the connection between the mark and
the product. For example, the mark PENGUIN as applied to
refrigerators.
A descriptive mark is a
word that merely describes a quality or characteristic of
a product. Descriptive marks are not entitled to trademark
protection unless they have obtained “secondary
meaning” under the trademark law. An example of a
descriptive mark would be LIGHT to identify a lightweight
notebook computer.
A generic mark simply
identifies by name a particular product. Generic marks are
never entitled to trademark protection. An example of a
descriptive mark would be MODEM in connection with modem
sales. If trademark protection were allowed in this
instance, the company could essentially remove the word
“modem” from the English language.
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