I previously addressed two groups of marks: fanciful and arbitrary. These marks have the following in common: (1) there is no apparent relationship to the products or services represented on behalf of the source; and (2) therefore, the business owner requires a greater financial investment to establish the customer’s association between these marks and the products or services.
Our third and fourth groups of marks are distinguishable from these previous groups, because there is a more immediate logical connection between (i) the appearance, sound or smell of the mark; and (ii) the items/services sold under the mark. The third group is known as suggestive service marks and trademarks. Suggestive marks do not directly designate features purposes or the purchasers of the associated goods or services. However, with a small leap of faith the consumer will think “oh yes, it (the product or service) does have that particular quality or characteristic I want now that I think of it.”
Examples of suggestive marks are: Calico Corners® and Calico Home®. Calico Corners® represents sale of fabrics for furniture, window treatments and walls, while Calico Home® provides retail store services for these products. When the business owner selected these marks, he or she accurately predicted that consumers would associate the word ‘calico’ with cozy antique and vintage interiors. This is so because in well-known locations as Williamsburg, Virginia and Shenendoah National Park in the United States, fabrics known as calico prints are extensively displayed in restored interiors. This fabric is therefore well established as a pioneer yet genteel material used by American settlers to decorate their homes.
Adding the words ‘corners’ and ‘home’ further emphasis the small town atmosphere upon which the business owner relies to attract certain purchasers. Consequently, calico print fabrics, generally in small floral prints, are currently displayed extensively in ‘high end’ wallpaper and furniture coverings. In sum, each logo attracts in potential customers in search of that uniquely Americana yet old fashioned ambience. Because of this ambience, the business owner requires less financial investment to create the association between the marks and the products/ service.
The fourth group, descriptive marks, explicitly designates a feature, service, or purchasers of a service or product. A court found that STEELBUILDING.COM is a descriptive mark for computerized online services to the metal building and roofing fabrication industry. Other examples from judicial decisions include (i) a phone number 369-CASH found descriptive of mortgage related services; and (ii) BREADSPRED found descriptive of jams and jellies.
Descriptive marks are eligible for the Principle Federal Register only if specific (often pricey) evidence is submitted to the trademark office. Such evidence includes: advertising expenditures; long use of the mark in an exclusive continuous manner; five years of appropriate mark use; affidavits asserting recognition of the mark as a source indicator; prior federal registrations for related goods and services; survey evidence; market research; and consumer reaction studies. Unfortunately, there is often a fine line between descriptive and generic subject matter, so the business owner should lean towards the suggestive, fanciful or arbitrary mark to avoid this pitfall.
© 2011 Adrienne B. Naumann
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