When clients come to me for trademark registration, they usually want to know how strong their proposed mark is. There is no formulaic approach for providing that evaluation, but practitioners may rely on the trademark sliding scale of distinctiveness, also known as the trademark spectrum. I use the model below to help illustrate this spectrum for my clients:
The higher you are on the spectrum, the more likely it is that your mark will be registered. The categorical spectrum was established in the landmark case of Abercrombie & Fitch Co. v. Hunting World, 537 F.2d 4 (2nd Cir. 1976). The five categories are generic, descriptive, suggestive, arbitrary, and fanciful. In the next few weeks, we will discuss each category here on the blog. Today, we start with the “Generic” category.
Generic marks are never protectable as a trademark. They cannot be registered because no provider or manufacturer should be granted the exclusive right to use the term as a matter of policy. Examples of generic marks are the term soap or the term salad. One of the primary functions of a trademark is to serve as a brand-identifier and a good trademark will help a consumer to distinguish one brand from another. Generic terms such as soap or salad are incapable of doing so.
Interestingly, highly successful brands may face “genericide,” or the danger of their trademark becoming generic. This occurs when the trademark becomes the generic substitute that the public uses to identify the goods or services. An example of this is Bayer losing its trademark on “Aspirin.”
Have you ever wondered why Johnson and Johnson’s Band-Aid jingle says, “I am stuck on Band-Aid BRAND, ‘cause Band-Aid’s stuck on me”? By reformulating its jingle to include the term “brand”, Johnson and Johnson hopes to keep consumer association with its specific brand, Band-Aid and thus avoid losing its trademark to genericide.
When choosing a potential mark to identify your brand, avoid generic, common-place terms. You won’t be able to take advantage of the benefits of federal registration of your trademark.
Stay tuned next week as we continue along the spectrum with “descriptive” marks.