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A Guide to Trademarks and the Trademark Process
A Guide to Trademarks and the Trademark Process:

What a Company Needs to Know Before Selecting and Protecting Its Next Trademark

As the lifeblood of any new product, an advertising campaign often revolves around the strength of its trademark. Selecting an appropriate trademark becomes more important and more difficult as intensified market competition increases the length and expense of new drug and herbal supplement development. Selecting the appropriate trademark, however, is no simple task: the trademark selection process is void of concrete guidelines and rife with potential pitfalls; creation and protection of a trademark can be costly; and measures should be taken to protect that investment.

After reading the article, Rooibos Tea Trademark Dispute Settled, it should come as no surprise that trademark selection is an important step in any company’s marketing efforts. Trademarks function primarily to indicate the origin and quality of a product to consumers, and to help consumers distinguish one product from the next.1 A trademark is a powerful advertising tool that helps a company’s product stand out, and helps the company capitalize on its hard-earned reputation and goodwill.2 A strong mark will give a company a nearly exclusive right of use. However, a poorly selected trademark will leave it with little recourse against others who wish to use a similar or even identical mark.

While a number of factors go into the selection of a trademark, the ultimate decision is often made by marketing and advertising professionals with little regard to the legal strength of the underlying mark.3 Many companies do not exercise due diligence in selecting and researching potential trademarks. As evidenced by the unfortunate struggles of Burke-Watkins in the Rooibos case, such a lack of effort and planning could leave a company paying hundreds of thousands of dollars promoting and protecting a mark that isn’t worth its packaging.

Prudent trademark selection requires two crucial steps prior to registration. First, a business organization should select a mark that will be as strong as possible. Second, the business should conduct the appropriate search in order to ensure that the proposed mark, or one similar to it, is not already registered to someone else. By spending the time and effort on these two steps before registering a mark, a business can ensure that it has the strongest mark possible. Each of these steps will be discussed below in detail.

Selecting the Mark

Creating or choosing a strong mark is possibly the most important first step in the selection of a trademark. All marks seek a level of distinctiveness for trademark registration. While there is no mechanical formula for determining the strength of a proposed trademark, courts group marks into four categories that create a spectrum of trademark strength. Those categories, from weakest to strongest, include marks that are generic, descriptive, suggestive, and arbitrary.4 Arbitrary and suggestive marks are inherently distinctive, while descriptive marks are not distinctive unless used extensively enough to develop a certain level of market awareness. It is important to understand those categories as they provide the basic framework for determining a mark’s strength.

Generic Marks

A generic term is the weakest form of a trademark.5 A generic term is essentially the common name for a product, for example “chair” and “floor.”6 Thus, a generic term answers the question “What is this product?”7 Since there is a strong public interest in promoting competition in the market, one company cannot trademark generic terms, products, and ingredients; otherwise, that company could effectively create a monopoly on any such products, and frustrate market competition.8 To preserve fair competition, then, generic terms receive no legal protection.9

The primary purpose of creating a trademark is to promote a product. Sometimes, however, a mark becomes so integrated in society that it loses distinction and becomes generic. Some examples are Xerox®, Kleenex®, and Band-Aid®. While immense popularity is a goal each company strives to achieve, the genericide that occurs creates a freedom for public use, which the company can do little to protect against. When this situation occurs, a company will often change advertising to compensate, as in “Band-Aid brand bandages.”

In the Rooibos case, a US District Court determined that Burke-Watkins’ “rooibos” mark was generic as it applied to teas, and thus invalid as so applied.10 The parties agreed that rooibos was the name of a South African shrub used to make a tea called Rooibos Tea.11 As the name of the main ingredient in a type of tea, the term rooibos was held to be invalid as a trademark related to teas because it was generic.12 The Court also concluded that it was immaterial that the term rooibos had two meanings, one of which had nothing to do with tea.13 The Court determined that since one of the meanings of rooibos dealt with the tea-making shrub, the term was generic as applied to teas.14

As will be discussed below, it is also important to note the type of product that a company intends to associate the mark with. A mark, such as “rooibos,” that is generic as applied to tea, may not be generic as applied to some other product in a different class of trade. For example, “Rooibos” might make an excellent trademark for plastic cups.

Descriptive Marks

The next step in the spectrum of strength is the descriptive mark. Descriptive marks describe some aspect or characteristic of a product.15 The term “Honey-Baked” is an example of a descriptive mark used to sell a type of ham.16 Generally, a mark that is merely descriptive will receive no protection. A descriptive mark can become distinctive (and therefore protected) if it develops a secondary meaning through a certain level of market awareness.17

A word or phrase develops a secondary meaning when consumers begin to associate that word or phrase with the product or service.18 The meaning is “secondary” because it is second to the phrase’s primary meaning. For example, the primary meaning of the phrase “Honey-Baked” is the manner in which a ham is cooked. Since a company marketed Honey-Baked Hams exclusively, the phrase developed a secondary meaning; consumers now associate the term “Honey-Baked” with Honey-Baked Hams.

It is not necessary for consumers to identify the source (manufacturers) of the mark to establish secondary meaning.19 Ultimately, a secondary meaning is determined if consumers associate the mark with a single source.20

Suggestive Marks

The next type of mark, the suggestive mark, is similar to a descriptive mark, with one subtle but crucial difference. Suggestive marks do not literally describe a product or service, but rather suggest something about it.21 Unlike a term that literally describes a good or service, a suggestive term requires some imagination on the part of the consumer in order to connect the good with the mark.22 For example, “Uncola” is a suggestive mark, as a noncola soft drink.23 Suggestive terms receive protection without evidence of a secondary meaning.24

Arbitrary and Fanciful Marks

Arbitrary and Fanciful marks are the most protected, and are almost always considered strong marks.25 An arbitrary mark is a term or phrase whose ordinary meaning is applied to the goods or services in an unfamiliar manner.26 The Camel trademark for cigarettes is an example of an arbitrary mark because the cartoon drawing of a camel has no connection to the cigarettes. The Fanciful mark is similar in function, yet slightly different in form. A Fanciful mark is a made-up term with no real definition, such as Kodak or Exxon.27

The Arbitrary or Fanciful mark has a distinct advantage over any other kind of mark. First, the owner of one such mark is unlikely to encounter opposition to the mark. Additionally, should another organization challenge or infringe the owner’s mark, the owner is much more likely to prevail in the ensuing litigation if the owner’s mark is properly registered.

It should be clear that identifying generic marks versus arbitrary or fanciful marks is a fairly straightforward business. At first blush it may seem logical to simply choose an arbitrary mark and receive full and unfettered protection of a trademark. However, the realities of business, competition, and budgets may not always allow that. A business that is trying to establish name recognition using an arbitrary trademark will have its work cut out for it. An arbitrary mark will require more marketing and advertising resources in order to get consumers to associate the product with the mark. The time, money, and effort necessary to establish an arbitrary mark often deters businesses from going that route. Thus, selecting the best trademark requires an assessment of how many resources a business can allocate now, in order to obtain the strongest mark possible in the long run.

For those reasons, many businesses end up selecting marks (e.g., Pizza Hut) that walk the line between descriptive and suggestive. It is easy to see the logic in such a decision. If it is more likely that consumers will naturally make the connection between a mark and a product, the seller will need to use fewer resources establishing name recognition and market share. For that reason, it is critical to understand the difference between descriptive and suggestive marks.

The interpretation of descriptive and suggestive marks is subjective, which can make it difficult to choose a new mark. When walking the line between descriptive and suggestive marks, it helps to keep in mind the mental “jump” a consumer will have to make to associate the mark with a specific product. The larger the jump, the more likely it is that the mark is suggestive. Moreover, a mark’s meaning can change over time. For example, a mark that is suggestive (and has protection) at one point may, over time, become descriptive (and have no protection). This category change can be avoided by not directly describing the product or services by using the mark (e.g., “Original Blend” is descriptive as applied to cat food).28 Otherwise, the mark may be categorized as descriptive and without secondary meaning, and the mark would have no trademark protection. Another example of a suggestive mark that switched categories is “Forum.” Originally categorized as suggestive, this mark for business training seminars was found to be descriptive in nature.29 Again, “Forum” originally had trademark protection as a suggestive mark, but when it was found to be descriptive with no secondary meaning, it had no trademark protection.

When selecting a mark, it is also important to keep in mind the class of goods for the trademark.30 In many instances, this will make a tremendous difference in where the mark will fall on the spectrum of strength. As mentioned above, Burke-Watkins’ mark was generic as applied to teas, because it was the name for a type of tea. However, had Burke-Watkins been a toymaker and used the “Rooibos” mark in connection with the sale of toys, the mark would have received full protection as an arbitrary mark. Thus, the class of goods that one plans on introducing will play an important role in determining which marks are strong, and which marks one should avoid.

Searching the Mark

Once a proposed mark is selected, it is of paramount importance to conduct (or have an attorney conduct) a trademark search. Conducting the appropriate search will allow one to determine whether one’s proposed mark is available for use, and not currently being used by someone else. A search will also allow one to determine how well one will be able to protect the mark from infringement by others, i.e., once the mark is registered. Conducting the appropriate search will allow one to avoid needless registration fees and costly litigation expenses.

It is recommended that a thorough trademark search include, but not be limited to, federal registered or applied trademarks, international uses, and common law uses. Other recommended search areas include the following: the United States Trademark Register, the United States pending trademark applications, State registrations, market directories, phonebooks (for major cities), domain names, trade name listings, and reported decisions.31

Courts have not provided specific guidelines, but have at times reprimanded defendants who have not conducted thorough searches.32 Courts try to determine what the term means to prospective consumers.33 To answer that question, the courts look at a variety of sources: dictionaries,34 trade usage,35 trade journals,36 survey evidence37 and a host of other sources to determine what a given term means. These resources can be used to search the mark prior to registration, saving court time in the future. Ultimately an attorney will be able to provide these search abilities. Pricing depends on each attorney’s fee-based practice and range of services.

In the constantly growing and competitive market of herbal products and supplements, proper trademark selection is more important than ever. A trademark will prove to be an invaluable asset in distinguishing a product from those of competitors. A poorly selected trademark, however, is likely to become more of a liability than an asset, creating needless expense and providing little, if any real protection. The rooibos case helps illustrate the importance of choosing a non-generic mark to avoid costly court fees, and preserving a fair marketplace.

There are a number of guidelines one can follow to help ensure that a trademark is as effective and protected as possible. Knowing how to categorize and select a mark that is as distinctive as possible is the first step towards owning a strong trademark. Exercising due diligence in the classification of one’s goods and in searching for similar marks will take one even further. As a final caveat, one should note that while this article is intended to provide a general overview of trademark selection, it is by no means exhaustive. There is no substitute for the sound advice of experienced legal counsel when creating, maintaining, and protecting one’s Intellectual Property rights.

Rakesh Amin is an attorney and pharmacist in Chicago specializing in intellectual property law (e.g., patents, trademarks, copyrights and licensing) as well as safety, labeling, and other regulations concerning herbs and other dietary supplements. Further inquiries or comments can be directed to Mr. Amin at Amin Law, LLC, at (312) 327-3382 or e-mail to

References and Endnotes

1. United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 97 (1918); Scandia Down Corp. v. Euroquilt, Inc., 772 F.2d 1423, 1429-30 (7th Cir. 1985), cert. denied, 475 U.S. 1147 (1986).

2. Scandia, 772 F.2d at 1429-30.

3. Martha M. Rumore, The Role of Pharmacists in the Pharmaceutical Trademark Evaluation Process, 6 J. Pharmacy & Law 83, 86 (1996).

4. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 120 (1992); Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976).

5. Restatement (Third) of Unfair Competition § 15, comment a (1995) (“Generic designations are not subject to appropriation as trademarks at common law and are ineligible for registration under state and federal trademark statutes”). See Two Pesos, 505 U.S. 763.

6. Id.

7. See United States Jaycees v. San Francisco Junior Chamber of Commerce, 513 F.2d 1226 (9th Cir. 1975) (discussing the “Who are you-what are you” test).

8. Blau Plumbing, Inc. v. S.O.S. Fix-It, Inc., 781 F.2d 604, 609 (7th Cir. 1986).

9. Restatement (Third) of Unfair Competition § 15, comment a.

10. Burke-Watkins, Case No. 03-CV 01862.

11. Id.

12. Id.

13. Id.

14. Id.

15. Stix Prods. Inc. v. United Merchants Mfrs., Inc., 295 F. Supp. 479, 487-488 (S.D.N.Y. 1968).

16. Schmidt v. Quigg, 609 F. Supp. 227 (E.D. Mich. 1985).

17. Vision Center v. Opticks, Inc., 596 F.2d 111, 115 (5th Cir. 1979), cert. denied, 444 U.S. 1016 (1980); Miss Universe, Inc. v. Patricelli, 408 F.2d 506, 509 (2d Cir. 1969).

18. Harlequin Enters., Ltd. v. Gulf & W. Corp., 644 F.2d 946, 949-950 (2d Cir. 1981).

19. Practicing Law Institute, Trademark Law, Third Edition, “Selecting a Trademark,” 2-7.

20. Aromatique, Inc. v. Gold Seal, Inc., 28 F.3d 863, 871 (8th Cir. 1994); Warner Bros. v. Gay Toys, Inc., 724 F.2d 327, 333-34 (2d Cir. 1983).

21. Stix, 295 F. Supp. at 488.

22. Id.

23. Coca-Cola Co. v. Seven-Up Co., 497 F.2d 1351 (C.C.P.A. 1974).>

24. Id.

25. Sports Authority Inc. v. prime Hospitality Corp., 89 F.3d 955, 961 (2d Cir. 1996); Kookai, S.A. v. Shabo, 950 F. Supp. 605, 607 (S.D.N.Y. 1997).

26. Tisch Hotels, Inc. v. Americana Inn, Inc., 350 F.2d 609 (7th Cir. 1965).

27. Id.

28. General Foods Corp. v. Ralston Purina Co., 220 U.S.P.Q. 990, 994 (T.T.A.B. 1984).

29. Forum Corp. of N. Am. V. Forum Ltd., 903 F.2d 434, 444 (7th Cir. 1990).

30. T.M.P.R. 2.86(b).

31. Practicing Law Institute, Trademark Law, Third Edition, “Searching a Trademark,” 3-2.

32. International Star Class Yacht Racing Ass’n v. Tommy Hilfiger, U.S.A., Inc., 80 F.3d 749, 753 (2d Cir. 1996).

33. 15 U.S.C. § 1064(c), Lanham Act. Available at:


34. Surgicenters of America, Inc. v. Medical Dental Surgeries, Co., 601 F.2d 1011 (9th Cir. 1979).

35. Self-Realization Fellowship Church v. Ananda Church of Self-Realization, 59 F.3d 902 (9th Cir. 1995).

36. Dan Robbins & Associates, Inc. v. Questor Corp., 599 F.2d 1009 (C.C.P.A. 1979).

37. See Folsom & Teply, Surveying “Genericness” in Trademark Litigation, 78 Trademark Rep. 1 (1998) (critiquing existing survey models that test for generic usage, and proposing a new model).