Narrow Scope of Protection For Descriptive Marks

Under the Lanham Act, which is the primary federal trademark law in the United States, and the Trademark Manual of Examining Procedure (TMEP), the strength or weakness of a trademark is crucial in determining its scope of protection.

The strength of a trademark is often evaluated along a spectrum of distinctiveness, with generic marks at one end and arbitrary or fanciful marks at the other.

• Generic marks are the weakest and are never registrable or protectable because they refer to a general class of products or services. An example might be “Computer” for a brand of computers.
• Descriptive marks describe a quality, characteristic, function, feature, purpose, or use of the specified goods or services. They are only protectable if they have acquired secondary meaning (also known as acquired distinctiveness) in the minds of the consuming public.
• Suggestive marks indirectly refer to the goods or services and require some imagination, thought, or perception to reach a conclusion as to the nature of the goods or services. These marks are inherently distinctive and are given a moderate scope of protection.
• Arbitrary marks consist of a word or symbol that has a common meaning, but is used in connection with products or services unrelated to that meaning. An example might be “Apple” for computers.
• Fanciful marks are the most distinctive (and thus strongest) type of mark. They consist of coined words or phrases that have no meaning other than serving as an indicator of source for goods or services.

When a mark is considered “relatively weak,” it generally means that it falls closer to the generic or descriptive end of this spectrum. Such a mark might be a common or generic term, or it could be a term that is merely descriptive of the goods or services it represents without having acquired secondary meaning.

Because these marks are less distinctive, they are entitled to a narrower scope of protection. In other words, competitors might be allowed to use similar marks without infringement, especially if those uses are unlikely to cause consumer confusion.

In contrast, a “strong” mark (such as a fanciful or arbitrary mark) is more distinctive and can enjoy a wider scope of protection, making it easier for the owner to prevent others from using similar marks.

Disclaimed Terms & Likelihood of Confusion

The practice of “disclaiming” parts of a trademark is a significant aspect of trademark law, and it plays a crucial role in assessing the overall strength of a mark and its susceptibility to confusion with others. When an element of a composite trademark is disclaimed, it typically means that the applicant acknowledges this portion of the mark is not inherently distinctive, either because it’s generic or descriptive without having acquired secondary meaning.

The disclaimed portion, thus, is usually considered the weaker part of the trademark. This stems from its generic or merely descriptive nature, which does not substantially contribute to the distinctiveness of the overall mark. The disclaimer is a recognition of this fact.

The non-disclaimed parts, conversely, are usually the more dominant elements of the mark. They are typically the components that are more inherently distinctive or have acquired secondary meaning. These elements are the ones that the average consumer is more likely to associate with the source of the goods or services the trademark represents.

In the context of a likelihood of confusion analysis – the key test for trademark infringement – these disclaimed parts are typically given less weight. This is because they are less likely to cause confusion among consumers about the source of goods or services. The more distinctive and non-disclaimed parts of the mark are the primary focus in this analysis, as these are the elements most likely to leave an impression on consumers and influence their purchasing decisions.

However, it’s worth noting that even though a disclaimed part of a mark may not individually be protectable, it still contributes to the overall commercial impression of the composite mark. Therefore, even disclaimed elements may be considered to some extent in a likelihood of confusion analysis, but they will generally be viewed as less significant than the distinctive, non-disclaimed portions of the mark.

Contact Our Trademark Attorneys

We invite you to reach out to our law firm and see how our trademark attorneys can assist with your trademark selection process. We can assist in assessing the strength and weakness of trademarks, taking into consideration the key factors that can influence a trademark’s distinctiveness and protectability. This involves conducting a thorough likelihood of confusion analysis to ensure your chosen trademark stands the best chance of gaining registration and avoiding infringement issues.

Our attorneys can provide insightful guidance, from identifying whether certain elements of your proposed trademark might be deemed generic or descriptive, to advising on strategies to enhance the distinctiveness of your trademark. We also help clients understand the implications of potential disclaimers on the overall strength of their composite trademarks.

Choosing the right trademark is crucial in establishing your brand identity and protecting it from competition. By leveraging our experience, we can help ensure you’re equipped with a strong and enforceable trademark that aligns with your business objectives. Please feel free to contact us at your earliest convenience. We look forward to the opportunity to assist you with your trademark needs.