How does a party prevail on a claim of trademark infringement action? A party must establish that it has a valid mark entitled to protection; and that the infringing party used the same or a similar mark in commerce in connection with the sale or advertising of goods or services without the party who holds the mark’s consent. The party that holds the mark must also show that infringing party’s use of the mark is likely to cause confusion as to the affiliation, connection or association of infringing party to the holder of the mark, or as to the origin, sponsorship, or approval of infringing party’s goods, services or commercial activities by the holder of the mark. Thus, “use,” “in commerce,” and “likelihood of confusion” are three distinct elements necessary to establish a trademark infringement claim.
Courts generally group marks into four categories when determining if a mark is distinctive: (1) arbitrary or fanciful, (2) suggestive, (3) descriptive, or (4) generic. The category in which a mark falls is based on the relationship between the mark and the underlying product or service. The legal protection afforded to a particular mark depends on which category that mark falls within. The most stringently protected mark is known as an arbitrary or fanciful mark. An arbitrary or fanciful mark bears no logical relationship to the underlying product. Such marks consist of words or images which have some dictionary meaning before being adopted as trademarks, but which are used in connection with products or services unrelated to that dictionary meaning. Arbitrary or fanciful marks are inherently distinctive, meaning they are capable of identifying an underlying product, and in turn are given a high degree of protection.
Another category of mark that falls one step below the arbitrary/fanciful mark is known as a suggestive mark. A suggestive mark evokes or suggests a characteristic of the underlying good or service. It tends to indicate the nature, quality, or a characteristic of the products or services in relation to which it is used, but does not describe this characteristic, and requires some exercise of imagination on the part of the consumer to associate the word with the underlying product or service. At the same time, however, the word is not totally unrelated to the underlying product. Like arbitrary/fanciful marks, suggestive marks are considered inherently distinctive and are given a high degree of protection.
The third type of mark is known as a descriptive mark. A descriptive mark merely describes, rather than suggests, a particular characteristic or quality of an underlying product or service. Courts have determined that descriptive marks are not inherently distinctive, and instead are only protected if they acquire a “secondary meaning.” A descriptive mark is found to have acquired secondary meaning when the consuming public primarily associates that mark with a specific producer, rather than the underlying product. The public need not be able to identify the specific producer; only that the product or service comes from a single producer.
When trying to determine whether a given term has acquired secondary meaning, courts will often look to the following factors: (1) the amount and manner of advertising; (2) the volume of sales; (3) the length and manner of the term's use; (4) results of consumer surveys. However, the fact that a mark is on the principal trademark register creates a presumption that the mark is not descriptive.
Finally, the fourth type of mark is known as a generic mark. A generic mark describes the general category to which the underlying product belongs. Generic terms are not protected by trademark law because they are simply too useful for identifying a particular product. A generic mark “cannot become a trademark under any circumstances.”
Should you have any questions regarding trademark infringement matters, contact the attorneys at Dalton & Tomich to assist you.