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What Is Trademark Priority And Why Should I Care?

Trademark LawIn this article, you can learn about:

  • The concept of “priority” in trademark law.
  • The four different categories of trademarks.
  • Why trademarks need to guard against “genericide”.

What Is Trademark Priority And Why Should I Care?

In patent law, what matters most is who files first, but in trademark law, who was using it first is the main concern.

If you did not register your trademark and don’t have it on record with the USPTO when you started using it, the question of who was using it first might complicate your registering it later on. This is because trademark law gives preference to those with “priority”. As such, whoever has priority has superior rights – regardless of the registration status of any given mark.

What Are The Four Categories Of Trademarks?

Trademark distinctiveness or strength refers to how distinct the mark is in the mind of a consumer. A less distinctive mark might get you a sale faster, but in the long run, it’s likely going to be more difficult for you to protect that mark. What’s more, it will be difficult for you to build goodwill and a reputation as a distinct provider of your specific goods or services.

This may be counterintuitive to a lot of business owners who spend a lot of time worrying about search engine optimization (SEO), and they want the description and the name of the products to be something the customer encounters when conducting an online search for their product.

However, you want distinctiveness when building goodwill because, if your mark isn’t distinct, then it’s not going to be remembered by the consumer.

The four levels of distinctiveness from weakest to strongest are:

Level 1: Generic (Weakest)

Your mark is considered generic if you call your business by the name of your product, goods, or services. A generic mark can never be registered in any situation.

For example, if you sold cookies and your company was called “Cookies” you could not register that name – because it would not follow the fair competition philosophy. Why? You’d be cornering off or drawing a barrier around your competitors using the word ‘cookies.’

Level 2: Descriptive (Weak)

Your mark is considered descriptive when it uses a feature of your goods or services as its trademark.

For instance, if you had a crunchy food product and you called it ‘Crunchy’ that is only merely descriptive. However, descriptive marks can eventually gain protection and registration through the doctrine of secondary meaning or acquired distinctiveness.

Secondary Meaning or Acquired Distinctiveness is if the trademark has been in use for a long enough time that it has acquired distinctiveness. There are no other competitors that are interfering with the product, and customers have come to identify that as the specific provider of those goods or services.

For example, Zatarain’s Fish Fry was one trademark that was debated. As a batter for frying fish, they called it fish fry. USPTO said it was merely descriptive, but then they ended up registering it.

Zatarain’s Fish Fry can acquire distinctiveness, even though it’s merely descriptive. This is done by sitting on the supplemental register. Through the secondary register, marks found to be traditionally incapable of working as trademarks can reach trademark status after public recognition due to years of use.

Statutorily, if it’s merely descriptive, then it is not allowed to be registered. Zatarain’s would have to go through extra hoops to get a merely descriptive mark such as “Fish Fry” registered.

Level 3: Suggestive (Strong)

Suggestive trademarks are sufficiently distinct to get registration, though they’re a dangerous field. It’s more likely for a suggestive mark to run up against another suggestive mark, but not as likely as a descriptive mark or a generic mark to encounter similar marks out there.

A suggestive mark is one where the word or the image conjures up the image or similar image of what the product or service is.

For example, Coppertone sunscreen is a suggestive mark – because it’s suggesting that using the product will give your skin a copper tone. Greyhound travel services is a suggestive mark because it conjures up the idea of the speed and efficiency of a race dog.

Level 4: Arbitrary/Fanciful or Coined (Strongest)

An arbitrary trademark or a fanciful or “coined” mark is one that’s completely unrelated to the product, still it’s not a made-up word. Both arbitrary and fanciful or coined trademarks are strong because they don’t suggest, describe, or identify in any way the goods or services being sold.

For instance, Apple for computers is an “arbitrary mark. It’s a strong trademark because if someone was selling apples, you would not expect them to sell you a computer as well.

A fanciful or coined mark is a made-up word, such as Nabisco. Even though the word Nabisco comes from “National Biscuit Company”, it doesn’t suggest any of those words.

What Does It Mean For A Trademark To Be A Victim of “Genericide”?

The concept of “Genericide” is when a product’s trademark becomes so popular that it loses the right to protect its brand. Some examples trademarks that were casualties of genericide are:

  • Aspirin

This was a brand name until everyone in the world started calling the pill made from willow bark ‘aspirin.’ Now, the word aspirin belongs to nobody and everybody can call the pill aspirin.

  • Escalator

This was trademarked by the Otis Elevator Company around the early 1900s. The company made moving staircases, but when other companies started making moving staircases, nobody used the names of motor stairs, moving stairs, or electric stairways. Everybody kept calling the moving staircases ‘escalator.’ Because the word ‘escalator’ became generic, the trademark is no longer valid.

  • Xerox

This mark was almost murdered by becoming generic. As a result, the company spent a lot of money on an ad campaign to remind people of the Xerox name. The ad went something like, “You’re not just making a copy. You’re making a Xerox.” The subtle reminder was that Xerox was a brand – and that the name wasn’t just a new word copying, which it did for a little while.

While Xerox didn’t adapt itself well to the internet age, it did manage to prevent the name Xerox from becoming the generic word for copy and was thus able to hold onto its trademark.

  • Google

The tech giant Google also went through a similar close call because the word ‘google’ has become a standard verb for searching on any internet search engine. Similar to Xerox, Google has been aggressive in trying to protect its trademark from slipping into genericide.

It’s very rare for a mark to become the generic, as this means that you’ve had a truly tremendous amount of success as a company. However, it’s important to keep these concerns in mind as you build your brand, so that you can always position your enterprise in the best possible manner.

For more information on the Importance Of Trademark Priority For A Business, a free initial consultation is your next best step. Get the information and legal answers you are seeking by calling (615) 784-9372 today.

Steven Wolfe , Esq.

Call For A Free Consultation (615) 784-9372

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