1. What is a Suggestive Trademark?
2. What is an Arbitrary or Fanciful Mark?
3. What Are Descriptive and Generic Marks?
4. What is Secondary Meaning?
5. What Kind of Trademark is the Best?
6. Why is a Suggestive Trademark Different?
7. Surnames as Trademark
8. Distinguishing between Suggestive and Descriptive Trademarks
9. Mental Leaps
10. The Trek Case: An Example of Suggestive vs. Descriptive Trademarks
11. Other Examples of Suggestive Trademarks
12. Understanding the Polaroid Factors
13. Facing a Trademark Infringement Case

What is a Suggestive Trademark?

A suggestive trademark is a distinctive, but not descriptive, mark which does not describe a product, but suggests or references it, requiring consumers to exercise imagination to connect the mark with the product.

There are five different categories of trademarks. Each is defined by the degree of distinctiveness inherent in its use. They were put in place by a federal appeals court ruling in the case of Abercrombie & Fitch Co. vs. Hunting World, Inc. As such, the standard used to determine under which category a mark falls is called the Abercrombie Test.

These five categories are:

Within the above classifications, a suggestive trademark is a mark which suggests a characteristic or quality of goods and services provided. It is a term that, while it doesn't expressly state the nature of the goods or service, can still be associated with said goods through a basic relationship. The following trademarks in the technology sector are suggestive in nature:

  • Microsoft (microcomputer software)
  • Android (artificially intelligent user interactive software)

The Microsoft and Android trademarks don't outright specify that they relate to computer or technology software, but the names themselves, with imagination, can have an association.

What is an Arbitrary or Fanciful Mark?

Consider the Apple trademark, which is arbitrary. The name "Apple" in no way refers to or has any suggestion towards computers or smartphones, but is by most consumers immediately associated with the computer company.

A fanciful mark, on the other hand, is one that carries no meaning other than as a trademark. It is an invented name that represents nothing other than a company. Examples of fanciful marks include Xerox and Exxon.

What Are Descriptive and Generic Marks?

Descriptive trademarks are those marks which only describe a portion of the goods and services represented by the mark. If a trademark gives the consumer an immediate idea of the kinds of goods to be sold, their characteristics, qualities or ingredients, it is considered as descriptive by the courts.

These trademarks are problematic as obtaining legal protection requires them to gain distinctive meaning outside of the description they offer. Gaining such "secondary meaning" can take years in the marketplace and significant success not only in business, but marketing. This leads many who have these kinds of marks to argue that they are actually suggestive, rather than descriptive.

Examples of descriptive trademarks would be a fast food business called "BURGER ON A BUN," or a deli called "SAMMICHES."

Generic trademarks, on the other hand, have no standing in court, because they simply describe an overall category of goods or services. They are, simply, too broad and general to be protected. A computer company cannot trademark the word "Computers." Apple and Samsung could not trademark the word "smartphone." A web provider could not trademark "Website" or "Email."

The federal government and USPTO maintain this public policy because it is felt that the free use of categorical terminology is of benefit to consumers, and to allow companies to trademark these categories would cause more harm than good.

What is Secondary Meaning?

The idea of secondary meaning refers to the concept that a descriptive trademark can take on another meaning by becoming identified with the specific company that holds it. This means that a formerly descriptive term has taken on a literal and important second meaning in the minds of the public.

If it can be proven that a descriptive mark has developed a secondary meaning, it then is treated as a suggestive mark for the purposes of trademark protection. Some examples of formerly descriptive marks which later became suggestive through secondary meaning include:

  • International Business Machines (IBM)
  • Western Digital
  • Power Computing
  • Windows

What Kind of Trademark is the Best?

Trademark protection was established by the Lanham Act to defend marks that are distinctive to a given business and the goods and services it provides. In order to gain protection, a person must either use the mark or have a displayed intent to use the mark in order to distinguish their goods and services over those of others. The more distinctive the mark, the more protection it offers.

Some of these marks carry inherent and obvious distinction. Others gain distinction through association. The public becomes so familiar with a business that its name, even if unrelated to its products, becomes synonymous with what it does.

Other marks, no matter what the company does, cannot become distinctive. The question, then, becomes whether the distinctiveness behind a trademark is acquired or distinctive.

Of the five categories of trademarks, the easiest to protect in a legal sense are suggestive, fanciful and arbitrary trademarks. Descriptive trademarks offer limited protection under specific circumstances. Generic trademarks are the most difficult to protect and defend, and almost never hold up in court.

Business owners should always seek to register a trademark that fits into one of these three more easily defensible categories. Many trademark cases revolve around the categorization of a trademark and its associated defensibility. Very often, such disputes revolve around the difference between suggestive and descriptive marks.

A few cases that have been important to establishing the protections available to trademark holders include:

  • 24 Hour Fitness USA, Inc. v. 24/7 TRIBECA Fitness, 277 F. Supp. 2d 356
  • Thane International Inc. v. Trek Bicycle Corporation, 305 F. 3d 894 (2002)
  • Welding Services, Inc. v. Forman, 509 F. 3d 1351 

Why is a Suggestive Trademark Different?

While they are not quite as strong legally as fanciful marks or arbitrary marks, they are the most common form of trademark seen. The reason for this is that there is a clear commercial and competitive advantage in the branding associated with the descriptive mark and its association with the goods and services provided.

Suggestive trademarks encourage and require the public to engage imagination, perception and thought to create an association with the goods. Such associative connections can be a very strong marketing tool.

They are also deemed in the eyes of the courts and government to be inherently distinctive. This means that they can offer trademark protection from the first time they are used in business. Suggestive trademarks require no establishment of secondary meaning.

Surnames as Trademark

Surnames can be a tricky issue in trademark law. Very often a surname can be treated as a descriptive mark until it gains secondary meaning. Once it has gained such a meaning, however, it is a very strong mark. Consider the McDonald's corporation. Originally a surname, it has now become synonymous with the company. This means that nobody else can open a restaurant called "McDonald's"—even if that is their actual surname. The trademark is too solid.

On the other hand, there is nothing to stop seven different people named Wyatt from opening retail stores called "Wyatt's"—unless one of them becomes so wildly popular that public perception identifies the name with retail sales.

Distinguishing between Suggestive and Descriptive Trademarks

Arguing that a descriptive trademark is actually suggestive can prove difficult, and involve marketing and legal research. Companies will have to undertake consumer surveys, gather expert testimony, and conduct long and detailed discovery periods to collect evidence.

However, this process is absolutely essential to arguing a case, and can have a dramatic effect on any settlement value. The differentiation between the descriptive and suggestive nature of a trademark is the fact on which many trademark infringement cases hinge. While it is easy to understand the difference conceptually, applying these definitions is often tricky at the margins, and predicting how a court will resolve the issue is similarly difficult.

There are two important benchmarks to consider when arguing a descriptive vs. a suggestive case. The first concerns the degree of information the mark directly delivers. The second is the need of the competitors to use the term.

If a bakery, for example, is called "Pittsburgh's Best Pies," this tells the user everything they need to know about the company—they are located in Pittsburgh, they make pies, and they consider those pies to be the best in Pittsburgh. There's absolutely no imagination necessary to connect the name to the service.

A suggestive mark, on the other hand, requires a leap of logic or imagination to draw a connection between the brand and the product. Consider the popular brand of tuna, Chicken of the Sea. There's absolutely nothing in this brand name that specifically says "tuna." It does, however, suggest something similar to poultry, which comes from the sea. The imagination needed to connect the mark with the product makes this suggestive.

Under the "competitors' need" benchmark, the courts consider whether permitting monopoly over a term would unduly harm competitors or the overall marketplace. No computer company, for example, will be allowed to trademark the word "computer" as part of their specific brand. This would force every competitor to come up with a new name for computers, and everyone in the public to learn this new term. It creates a competitive advantage that's not fair to anyone.

Mental Leaps

When determining whether a trademark is suggestive, the courts always examine the degree of mental leap that is required to associate mark with product or service. For example, in the Playtex Products v. Georgia-Pacific Corp, 390 F.3d 158 ruling, it was determined that the trademark "Wet Ones" could be held as suggestive.

While it refers to moist towelettes, it could also suggest a broad variety of other products. It is only associated with the product in question because of consumer familiarity. 

This is where cases can become complicated, however. In other cases, the trademark "Wite-Out" was also held to be suggestive rather than descriptive because the courts did not feel that taken alone it was obviously related to a correction product. "Work-n-Play," on the other hand, was held as descriptive as applied to a van with both professional and recreational uses. Here again, we see the need for secondary meanings in many such trademarks.

The Trek Case: An Example of Suggestive vs. Descriptive Trademarks

Another excellent example of a suggestive trademark comes to us via the Thane v Trek Bicycle case. For a very long time, Trek Bicycles had a trademark on the word "Trek." Later, an up-and-coming company called Thane began using the word "Orbitrek" as a trademark for stationary bicycles. Trek sued for trademark infringement.

The courts ruled that "Trek" was a suggestive trademark, which while it suggested a long journey, didn't directly suggest that such a journey had to be taken on a bicycle. It did not, however, apply as a fanciful or arbitrary mark since it was an actual word that had some relation to the product.

However, requests for summary judgment by both parties were refused. The reasons were twofold: first, the courts felt that while confusion was possible, it was not a foregone conclusion. Second, Trek had failed to conclusively demonstrate that it was famous in any notable circles.

Other Examples of Suggestive Trademarks

For more examples, consider the word "Penguin." If used as a descriptor in the name of a shop that specialized in the sale of accessories for cold weather pets, it could be descriptive. If it was used as part of the name of an air conditioning company, it could certainly be suggestive. As the name of a well-known publishing company, it's arbitrary.

Other suggestive trademarks on the market today include Playboy magazine, the convenience store chain 7-Eleven (originally named for its hours), and automobile models like Jaguar or Mustang (so named for their speed and performance). These trademarks require the consumer to use imagination and logic to make the leap required to get from name to product.

Understanding the Polaroid Factors

When someone is accused of infringement, the first step to take is to determine who was using the mark first. This person is the "senior user" of the mark, with the other being the "junior user." In general, a senior user will have more weight in an infringement case.

If you are the junior user, you will need to examine whether or not your use of the trademark creates a likelihood of brand confusion between you and the competitor. The benchmarks and factors used by the courts to determine infringement are known as the Polaroid factors, named for the 1961 Polaroid Corp. v Polaroid Elecs. Corp., 287 F.2d 492 (2d Cir. 1961) case.

These factors include:

  • The strength of the senior mark
  • How similar to each other the marks are
  • The degree of direct competition between the mark holders
  • The likelihood of expansion by the senior holder into the junior holder's area
  • The intent of use in the mark
  • Evidence that brand confusion exists
  • Consumer sophistication
  • Goods and services quality of the junior mark holder

Facing a Trademark Infringement Case

Defending a trademark infringement case can be very tricky. Case law is extensive and there are a lot of gray areas and conflicting rulings. If you are ever facing accusation of trademark infringement, or a situation where someone else has infringed on your trademark, having legal counsel in your corner is essential.

At UpCounsel, our database of intellectual property attorneys is drawn from the very best available. Many of the lawyers we work with have 17 years or more of direct experience, and come from the top legal schools in the nation, including Yale and Harvard Law. If you need help with any intellectual property case, post your legal need and access the very best today.