Trademark protection is based around a “strength” classification system. Strong trademarks are distinctive and are protectible. Weak trademarks are not distinctive. Weak marks cannot be registered or protected unless the trademark owner pumps up the mark with consumer awareness or “secondary meaning.”
Usually, what makes a mark weak is that it is descriptive -- it describes the nature, quality, characteristics, ingredients, or origin of a product or service. Descriptive marks are considered ordinary and therefore weak. Weak marks do not merit much judicial protection unless the owner can demonstrate secondary meaning (described below). That’s because a mark that describes the characteristics of a product or service does not effectively distinguish it from similar products or services offered by others.
Protecting descriptive marks does not fulfill the primary purpose of the trademark laws, which is to protect marks that operate as indicators of origin. Also, the law doesn’t want to grant a trademark owner the exclusive use of words and phrases that are in common use as descriptive adjectives, because that would limit others’ legitimate need to use such a word in their advertising.
So, as a general rule, the more that the mark describes the goods or services (for example, Shake ‘n Bake), the weaker or less distinguishable the mark. In some cases, if a mark is so descriptive that it is indistinguishable from the goods or service (for example, Light Beer for a beer low in calories), then it may be generic or too weak to ever obtain protection.
A descriptive mark will only be protected under trademark law if it achieves secondary meaning. Secondary meaning refers to whether the mark has acquired some distinction among consumers – that is the mark transcends the literal meaning of its words and is associated with a source. Usually it is demonstrated by showing either five years of continuous use in commerce or by substantial sales and advertising.
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Marks that are judged to be descriptive and which do not have secondary meaning do not qualify for placement on the Principal Register under the Lanham Act. Instead, they are placed on a list called the Supplemental Register, which offers much less protection than the Principal Register. After a descriptive mark has been in continuous use for five years, however, it can be moved to the Principal Register under the theory that it has developed secondary meaning: It has become a well-known identifier of a product or service through public exposure. At that point, a descriptive mark does act to distinguish certain products or services from others.
If a descriptive mark is mistakenly placed on the Principal Register by the USPTO, another party may challenge the mark’s validity up until the time the mark becomes incontestable (five years on the Principal Register). Once incontestability occurs, the mark is immune from a challenge on the ground that it is descriptive.
EXAMPLE: The mark “Dollar a Day” initially just described a service: car rentals for a dollar a day. However, over time, and with the help of an advertising campaign and virtually exclusive use of the phrase by the firm, the phrase lost its descriptive literal meaning and instead stood for a specific car rental service.
If the owner of a nondistinctive mark can show (usually through consumer polls) that the mark has acquired a secondary meaning, the mark will qualify for placement on the Principal Register. Even without such a showing, a mark that is kept in continuous and exclusive use by its owner for five years will be presumed to have acquired such secondary meaning and will qualify for registration on the Principal Register as a distinctive mark.
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