Pattishall IP Blog

June 8, 2017


Filed under: Trademark (General) — Tags: , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 9:29 am

By Janet Marvel

A case filed recently is an object lesson in the best way to pick a trademark.  The Color Run, LLC sued My School Color Run, LLC for using COLOR RUN for organizing 5K races where people pay to be covered with dyed cornstarch.

If I were the defendant, I would argue that COLOR RUN describes races where participants end up covered in different colors, and the mark, as descriptive, is not legally protected.

If I were the plaintiff, I would argue that COLOR only suggests the nature of the race, i.e., you have to think about it to determine what the race is about, and suggestive marks are legally protected.  I would also argue that I have set up COLOR RUN races for such a long time, they are well-known and my trademark rights are very strong.

If The Color Run tolerates unauthorized use of its mark, it might lose its rights.  That is true of every trademark owner.  But enforcement burdens can be eased by picking a mark in the first place that is easier to protect.  Had The Color Run picked a made-up word for its races, the mark would be easier and less expensive to protect.  On the other hand, no one would have any idea of the nature of the race just by hearing the name.

There is a trick to picking a good mark.  Trademarks are divided into four categories of protection.  The first category includes made-up and arbitrary terms.  Made-up terms, like GOOGLE for web searching services, and arbitrary terms (dictionary words used to designate something other than their standard meaning), like APPLE computers, are easiest to protect.  After all, why would anyone need to use a made-up or arbitrary word to describe what their product is, or what it does?

Made-up and arbitrary marks work well in the tech sector, where people are accustomed to them.  But in some more sober business environments, (say, industrial equipment) these terms might seem over-the-top.

Many marketers prefer the category comprising “descriptive marks.”  Descriptive marks, not surprisingly, describe some characteristics of products.  They can become trademarks if they are used for a long time and become well-known, but they don’t start out as trademarks.  You will have to prove they are distinctive to win your case (there are exceptions, but that’s a post for another day).  Examples of descriptive marks include HOLIDAY INN and BANK OF AMERICA.

Generic terms can never be trademarks.  No pencil manufacturer can stop a competitor from calling its products “pencils.”  “Pencil” is the generic name of the type of thing.

The holy grail for trademark owners may be the “suggestive” mark.  Suggestive marks evoke a characteristic of a product, but they don’t describe it.  They aren’t too weird for markets where consumers want marks that evoke trust (e.g. manufacturing supplies).  They aren’t too boring for the tech market.  Examples include CHICKEN OF THE SEA for tuna, PLAYBOY for men’s magazines, GLASS DOCTOR window repair, and EXTEND YOUR BEAUTY for eyelash extensions.

Unfortunately, the distinction between terms that merely describe a product (descriptive marks) and terms that suggest a product characteristic (suggestive marks) is murky.  A trademark lawyer can help you determine where your mark likely fits.

The bottom line:  If you can pick a mark that is coined or arbitrary, then go for it.  Fewer people will copy it; and if they do, they probably intend to infringe.  That makes your case much easier.  If you can’t pick a coined or arbitrary mark, go for one that is suggestive.  You won’t have to prove that the mark has become distinctive in the marketplace to protect it (although in litigation you may do it anyway, just to be on the safe side).  Suggestive marks are more distinctive than descriptive ones, so there is less justification for copying.  You are likely to face fewer infringers, and you have a better chance of winning disputes.

These materials have been prepared by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP for general informational purposes only.
They are not legal advice. They are not intended to create, and their receipt by you does not create, an attorney-client relationship.

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