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Two Tools for Selecting a Suggestive Trademark Over a Descriptive Trademark

One of my favorite trademarks. Since it requires a little imagination
to understand the meaning, it’s a classic “suggestive” trademark.

Time for a little Trademark 101.

The difference can be slight, but the legal effect huge: what’s deemed to be a “descriptive” trademark, and what’s deemed to be “suggestive.”

First, the consequences. A descriptive trademark needs “secondary” meaning to be protected as a trademark. Secondary meaning signals to consumers that goods or services sold in connection with the mark come from a particular source. It’s only through long use — usually five years or more — or lots of sales that a descriptive trademark acquires this secondary meaning apart from its primary, descriptive, meaning, and thus begins to function as a trademark. 

Not so with a suggestive marks. They are deemed to be inherently distinctive. In other words, they’re legally capable of functioning as a trademark the moment they’re used. That means no need to establish secondary meaning.

Given the important legal payoff, what determines whether a mark is descriptive or suggestive? Here are two tests you can use to gauge on which side of the fence the mark you’re considering is likely to fall. The first is the “degree of imagination test.” A descriptive trademark immediately tells the consumer something about the branded good or service. SEATTLE’S BEST COFFEE is descriptive because it immediately tells the consumer that the coffee being sold comes from Seattle and the seller thinks it’s the best. It doesn’t require any imagination for the consumer to receive that message.

Not so with a suggestive mark. A classic suggestive mark is CHICKEN OF THE SEA. It requires a little thought for the consumer to follow the logic that because chicken don’t live in the sea, the trademark owner must be selling some kind of seafood that is akin to chicken. Hmmm…. tuna! If the consumer needs to exercise at least a little imagination to get the information the mark provides, the mark is likely to be suggestive.

Another useful test is the “competitors’ need” test. If allowing one party to monopolize a word as a proprietary brand would tend to deprive competitors of the legitimate need to use a similar word in advertising, the mark is more likely to be descriptive. If you’re a cracker company, it wouldn’t be fair for the Crispy Cracker Co. to be able to prevent you from using “CRISPY” as part of your mark. To do so would give that company a competitive advantage, which isn’t something that trademark law is supposed to do. (Trademarks are simply supposed to indicate source.)

Hopefully these tests will help you decide to adopt the stronger “suggestive” trademark over the weaker (and without secondary meaning, completely unprotectable) “descriptive” trademark. You would be aghast at how much money brand owners spend on attorneys litigating about which side of the line their trademark falls.

For that reason, the better practice would be avoid the question altogether and to choose a trademark that would be classified as “arbitrary” (an ordinary word placed in an unfamiliar context, like APPLE for computers) or “fanciful” (a made-up word that doesn’t have any meaning other than as a trademark, like EXXON for gas). That’s the way to maximize your legal protection!

Posted on October 17, 2011 by Registered CommenterMichael Atkins in | CommentsPost a Comment

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