It may or may not be comforting to know that it is a secondary purpose of trademark law to protect the consumer from confusion so we don't get our goods all mixed up and are able to confidently pick the right product from the vast array. The primary p urpose of trademark law is to preserve consumer good will for merchants who use marks to identify their products. Another producer won't be able to cash in on a trademark holder's good reputation by appropriating the words and symbols associated with the holder's products.
Words are the most common form of trademark, but drawings, symbols or other artwork can suffice. A trademark can also be had in the shape or design of the product itself, provided the design is distinctive and a nonfunctional feature of the product. Regardless of the type of mark, the key to its validity is that the mark be "distinctive." To be distinctive a mark can be one of three things: 1) arbitrary and fanciful; 2) Suggestive; or 3) Descriptive. If a mark is 1) or 2), it is considered "inhere ntly distinctive." If a mark is merely 3), descriptive, it can only become distinctive by acquiring "secondary meaning."
An arbitrary or fanciful mark is one of those lovable made-up product names that seem to have their point source in automobile production - Miata, Prizm, Diamante, Maxima, etc. It also includes stuff like X-14 mildew spray, Opi grass seed, and many ci garette brand names. They cannot in any way indicate the purpose of the product. I'm not sure if this would exclude Toilet Duck or not. Regardless, it would exclude Windex. This mark would fall under the suggestive category. In this category we have products whose names suggest certain applications but leave something to the consumer imagination: the aforementioned Windex, Greyhound, Roach Motel. To be considered suggestive the product must pass two tests: 1) the more imagination the consumer has to use to figure out the product's use, the more likely the product will be suggestive; and 2) the mark can't be one that competitors need to describe their own products or services. This test probably means that Toilet Duck would be considered suggestiv e, not arbitrary or fanciful.
In the third category, Descriptive, marks must acquire "secondary meaning" to be legally distinctive. This is especially important for cliches, because descriptive marks are those that already have a traditional or accepted meaning in the mind of the public. It is only when, due to exposure as a mark, that the public comes to see the mark not in its ordinary role, but as an identifier of a particular product - the "secondary meaning." When people view the mark as the source of a product or service ( President's Choice 7 Reasons Too Good To Be True Cereal), rather than as a well-worn cliche (this acid is too good to be true!), the mark crosses over into distinctive-land. So, such things as long use of the mark on labels or in advertising and consumer ID surveys can be used to establish that the mark has attained secondary meaning. As a matter of law, if a mark has been used exclusively and continuously on goods or services in commerce for five years or more, that establishes, subject to rebuttal, th at the mark has acquired secondary meaning.
Getting down to the nut of the content of trademarks, i'll avoid irrelevant talk about the content of visual or numerical marks and focus on those using words. The key is that the mark create a separate commercial impression on the consumer, apart fro m any regular or normal usage the mark holds. In this light cliches and slogans are common trademarks, but to get them you've got to show that the mark has acquired secondary meaning. For example, somehow the people at Excedrin were able to show that th e phrase "extra strength pain reliever" had become a commercial identifier for Excedrin, and they got a trademark on the phrase.
On the other hand, if something is a generic name for a good or service, it by definition can't attain trademark status because it cannot identify or separate one brand of the particular good from another. It is common to all the brands of that good. In several cases the brand name for a good became its generic name, and the producers then lost their trademark in that good: thermos, aspirin, escalator, yo-yo.
One disputed point is whether basic, common adjectives like "delicious" or "tasty" should be held, as a matter of law (this phrase essentially means for all legal purposes-this may or may not make it relevant in the real world), as generic and incapabl e of serving as marks. One important court has said it depends: the court said that on the one hand, "tasty salad dressing" was ok as a mark, because it is not common to all salad dressings, unlike say, "french dressing." Similarly, "light beer" could not be a mark because it denotes a characteristic common to all brands of beer in competition. Contrast that with Coors Cutter's latest ad campaign, "There's no beer like it." True or not, Coors is attempting to take a generic phrase and commercially ap propriate it by plastering it all over every ad so that consumers see the phrase always and forever in association with Coors Cutter.
Another good category of things that can't be marks are words or phrases which are scandalous or immoral. One big case was a winemaker who wanted to call the wine "Madonna." The court said while this wasn't necessarily scandalous, it could be viewed as sacreligious, and denied the trademark.
Deceptive marks are also not allowed. The law defines these as marks which are "deceptive or that falsely suggest a connection with persons, institutions, beliefs, or national symbols." It's deceptive if it falsely indicates that the good or service is connected with a person or institution, or prospective purchasers think that a misdescription correctly describes goods or services, or the misdescription would be important to a reasonable consumer in deciding whether or not to purchase the goods or s ervices. This makes you wonder if "President's Choice" itself isn't deceptive, implying that the Executive Office of the U.S. endorses all that juice, cereal, cookies and spaghetti sauce. They probably get away with because they don't specify which Pres ident's choice it is: they could mean the union local's president, or the president of Lichtenstein, or the PTA president.
Along the same line, a private collection agency called "National Collection and Credit Control," whose logo included an American eagle superimposed on a map of the U.S., was denied a trademark because the agency falsely suggested a connection with the federal government. On the other hand, using Beethoven for a line of costume jewelry probably wouldn't be deceptive since the reasonable consumer would know that the famous deaf composer didn't actually sponsor or get involved with the jewelry.
There's also the problem of marks that are deceptively misdescriptive. But this isn't really important for us. An example, though, is a case where an upholstery company used the name "Lovee Lamb" to describe its all-synthetic automotive seat covers. The court said no dice because the name falsely suggested that the seat covers contained wool, and that the presence of wool or not in the seat covers would be an important factor for consumers deciding whether or not to buy the covers.
Surnames are often used in product names. Like the descriptive test, these are only valid trademarks if the name has acquired secondary meaning. The impact of the mark as a whole is what's important. Hence: "Jimmy Dean's Smoked Pork Sausage" - peac hy. "Abernathy's", a drugstore, no way unless secondary meaning could be shown. "Abernathy's Drug Emporium" - dandy. (Jay Huber)