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To be eligible for any level of trademark protection, a mark must be “distinctive” and not merely “descriptive” of goods or services. Whether a mark is distinctive and “how” distinctive or strong 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 strength category into which it falls.
A fanciful mark is one that is invented for sole purpose of being a trademark. For example, EXXON is a fanciful mark. It is a word that does not exist in English language and was created only for purpose of identifying 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 word. For example, mark APPLE as applied to sales of computers.
A suggestive mark is a mark that suggests a quality or characteristic of goods or services. Suggestive marks require some level of imagination to bridge connection between mark and product. For example, 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 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, company could essentially remove word “modem” from English language.
Mr. Fasthoff represents corporate clients and individuals in the fields of commercial litigation; entertainment litigation; intellectual property litigation; arts law; technology law; and a wide variety of other business litigation matters.