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Registrable vs Unregistrable Trademarks

 Article provided by Adams & Adams

The underlying principal of trademark law is that a trademark, be it a word, slogan or logo, must be capable of distinguishing the goods and/or services in relation to which it is being used from the same kind of goods/services of others.

It is very important for a business to choose trademarks that are not descriptive of the product and/or service offering of interest since, generally speaking, the more distinctive a trademark, the stronger the protection afforded and, in effect, the rights acquired in order to prevent third parties from using the same and/or similar trademark in relation to the same kind of goods and/or services.

Trademarks can be categorised according to levels of strength or distinctiveness from strongest to weakest. The table below illustrates this:

Fanciful, arbitrary and suggestive marks are deemed to be inherently distinctive in nature and are considered strong trademarks, whilst descriptive and generic trademarks are generally not capable of distinguishing and, therefore, weak trademarks. These various forms of trademarks are discussed in detail below.

Fanciful or Coined Trademarks
These trademarks are usually invented to function as trademarks and are the strongest kind of trademarks. Examples include KODAK for a technology company focused on imaging, XEROX for office printers, PEPSI for soft drinks or EXXON for petroleum products. These trademarks do not have a specific dictionary meaning nor do they describe the goods and/or services of interest. In view of the lack of descriptiveness of fanciful or coined trademarks, they are generally afforded the broadest scope of protection and it is far easier to enforce trademarks of this nature against any unauthorised use by third parties.

Arbitrary Trademarks
Arbitrary trademarks are words which appear in the dictionary but its definition is completely unrelated to the product or service offering concerned. Examples include APPLE for computers, STONE for beer, JAGUAR for cars, LOTUS for software or SHELL for a petrol station. As is the case with fanciful or coined trademarks, arbitrary trademarks are strong trademarks and are afforded a broad scope of protection against any unauthorised use by third parties. It is to be noted that the owner of an arbitrary trademark will not be able to prevent a third party from using the trademark in relation to the product and/or services offering falling within the dictionary definition of the word.

Suggestive Trademarks
A suggestive trademark tends to suggest an idea, quality or characteristic of an idea, or is indicative of an idea. Although these trademarks allude to some attributes or benefits of the product and/or service offering of interest, they do not merely describe the product or service offering. In essence, suggestive trademarks require some imagination, thought, or perception to reach a conclusion as to the nature of the goods and/or services. Suggestive trademarks differ from descriptive trademarks (discussed below) in the sense that, insofar as descriptive trademarks are concerned, consumers would generally reach a conclusion as to the goods and/or services of interest without having used any imagination, thought or perception.Even though trademarks of this nature are not as strong as fanciful or arbitrary trademarks, they are commonly used by businesses’ due to the inherent marketing advantage of tying a trademark to the product in a customer’s mind and are generally relatively strong trademarks and enforceable against unauthorised use by third parties. Examples of suggestive trademarks include MICROSOFT (software for microcomputers), PLAY STATION (video games), ROACH MOTEL (insect traps).

Descriptive Trademarks

Trademarks of this nature merely describe the product and/or service offering of interest and the rights flowing from these trademarks are very limited. It is generally very difficult to secure registration for merely descriptive trademarks (unless the mark has acquired a secondary meaning by virtue of extensive use thereof). For example, CARPET CLEANING SERVICES as a trademark for carpet cleaning or RICH AND CREAMY as a trademark for ice cream are unlikely to be granted registration, since the phrases merely describe the product / services offering in question. Similarly, merely laudatory terms such as “best” or “quality” are also generally not registrable.

Generic Terms

A generic term is a word or phrase that actually names a product and/or service offering i.e. has become the common term associated with a particular product and/or service to which it relates, thereby ceasing to function as an indicator of origin (i.e. a trademark). Generic terms are not registrable. An example of a generic term is “CLOCK” which is a generic term for a time piece. Other examples include ASPIRIN, SOCIAL NETWORK, E-MAIL and SMARTPHONE.

In view of the above the conclusion to be drawn is that, not only to secure a trademark registration but also to be able to enforce the rights conferred upon registration, it is preferable for businesses’ to attempt to register trademarks that are fanciful, arbitrary or suggestive. Businesses should avoid adopting descriptive or generic terms as trademarks.

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