The Supreme Court issued a very important ruling on generic trademarks earlier this summer. United States PTO v. Booking.com B.V., 140 S. Ct. 2298 (June 30, 2020). Before addressing the specifics of the decision, I need to provide some background on how trademarks that consist of words are classified along a spectrum.
The spectrum for word marks ranges from coined terms and arbitrary terms on one end and generic terms on the opposite end. Positioned between those two extremes are subjective trademarks and descriptive trademarks.
Coined marks are trademarks that consist of invented terms, such as ROLEX for watches. Arbitrary marks are trademarks that have no obvious relationship to the associated goods or services, such as APPLE for computers. Suggestive marks are trademarks that suggest, but do not explicitly describe, a quality of the associated goods. An example of a suggestive trademark is NIKE for shoes.
Coined marks, arbitrary marks and suggestive marks are inherently distinctive. As a result, they are considered to be desirable trademarks because they are strong. Also, such marks can be registered on the Principal Register once a trademark owner begins using them.
Descriptive marks are marks that describe a particular quality of an associated good or service, such as COLD AND CREAMY for ice cream. Descriptive marks are not inherently strong, so that they are not considered to be as desirable as coined marks, arbitrary marks or suggestive marks, initially. Also, descriptive marks are only eligible for registration on the Secondary Register once a trademark owner begins using them.
A Descriptive mark can develop into a stronger mark as the trademark owner builds up goodwill in the mark over time. Goodwill can be built up through a high volume of sales, advertising, marketing and unsolicited publicity. Thus, a descriptive mark can become as valuable (or even more valuable) than an inherently distinctive mark over time.
The line between a descriptive mark and a suggestive mark is not always very clear.
Generic marks are trademarks that represent the name of a class of products or services, such as MILK for milk. Generic marks can never be registered or enforced in court.
Like the line between a descriptive mark and a suggestive mark, the line between a generic mark and descriptive mark is not always very clear. My next blog post will discuss the U.S. Patent and Trademark Office’s attempt to draw a line in the Booking.com decision.