Section 3 Types of Trademarks

• Library: Intellectual Prop 2004

Not all marks are created equal. Some are strong, some are weak, and some are unenforceable. The courts have generally divided trademarks into four categories. From strongest to weakest, they are:

1. arbitrary or fanciful
2. suggestive
3. merely descriptive; and
4. generic

WSM, Inc. v. Hilton, 724 F.2d 1320, 1325 (8^th Cir. 1984).

Arbitrary or fanciful marks are entitled to maximum legal protection. Hallmark Cards, Inc. v. Hallmark Dodge, Inc., 634 F. Supp. 990, 998 (W.D. Mo. 1986). Artificial, created words like KODAK and XEROX are examples of arbitrary or fanciful trademarks. In Hallmark Cards, the court held that “Hallmark,” although a term that appears in the dictionary, was an arbitrary mark when applied to greeting cards. Id. at 998. Arbitrary marks can also include dictionary terms not normally associated with the goods or services. For example, Apple is an ordinary term, but when used for computers, it becomes an arbitrary term.

Suggestive marks are those that merely suggest some quality or nature of the goods. These marks are usually distinguished from the “merely descriptive” class of marks by applying the following test: “A term is suggestive if it requires imagination, thought and perception to reach a conclusion as to the nature of goods. A term is descriptive if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods.” Stix Prods., Inc. v. United Merchs. & Mfrs., Inc., 295 F. Supp. 479, 488 (S.D.N.Y. 1968).

For example, “LA” as a trademark for beer has been held to be suggestive because some operation of imagination is required to connect the initials “LA” with the generic phrase “Light Alcohol” for

which they stand. Anheuser-Busch Inc. v. Stroh Brewery Co., 750 F.2d 631, 635–36 (8^th Cir. 1984); cf. G. Heileman Brewing Co. v. Anheuser-Busch, Inc., 873 F.2d 985, 997 (7^th Cir. 1989) (“LA” for beer not a protectable trademark).

The third category of marks is the merely descriptive marks. These are the weakest of the enforceable marks. A mark is descriptive if it describes:

• the intended purpose, function, or use of the goods
• the size of the goods;
• the provider of the goods;
• the class of users of the goods;
• a desirable characteristic of the goods;
• the nature of the goods; or
• the end effect upon the user.

2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 11.16 (4^th ed. 2003); Co-Rect Prods., Inc. v. Marvy! Adver. Photography, Inc., 780 F.2d 1324, 1329 (8^th Cir. 1985); Cornucopia,...