What are the
Criteria for determining a "Good" Trade-Mark?
The nature of
the terms used as a trademark is extremely important from the standpoint of:
initial
registrability; and
lasting viability as a
trademark, since the trademark must be capable of distinguishing the wares
or services in relation to which it is used.
In evaluating a
trademark, there are four general categories of terms:
distinctive terms;
suggestive terms;
descriptive terms; and
generic terms.
Generally, the
terms that are easiest to register and to protect as trademarks are
"distinctive" terms. Distinctive terms are often arbitrary or
fanciful terms. They are unmistakably capable of identifying an owner's wares
or services without any likelihood of confusion, for the average consumer, with
the wares or services of another party.
At the other
end of the spectrum, "generic" terms will never be capable of
registration. The meaning of a generic term is synonymous with the wares or
services themselves (e.g., zipper, escalator, etc...). Generic terms are
incapable of distinguishing the wares or services of one party from those of
another.
Between these
two extremes lie "suggestive" and "descriptive" terms.
A
"suggestive" term is one that merely suggests the nature, quality or
characteristic of the wares or services in relation to which it is used as a
trademark. It is possible for suggestive terms to be registered as trademarks
but they make for "weak" trademarks because they often do not provide
their owner with the ability to prevent others from using marks which are very
similar and used in relation to similar wares or services, or that are
identical marks used in relation to different wares or services.
A "descriptive" term describes the nature, quality or
characteristic, the intended purpose or function, or the end effect upon the
user of the wares or services in relation to which it is used as a trademark.
Descriptive terms are not registrable unless, over a period of years, the terms
have acquired, in the minds of the public, a special, identifiable meaning (a
"secondary meaning") which links the wares or services to the owner
of the trademark.