4. What kinds of trademarks and service marks receive protection under trademark law?

As a general rule, trademark law confers the most legal protection to names, logos and other marketing devices that are distinctive—that is, memorable because they are creative or out of the ordinary (inherently distinctive), or because over time they have become well known to the public.

Trademarks said to be inherently distinctive typically consist of:

• unique logos or symbols

• words that are made up to be specifically used as a mark (“coined marks”), such as Exxon or Kodak

• words that invoke imaginative images in the context of their usage (“fanciful marks”), such as Double Rainbow ice cream

• words that are surprising or unexpected in the context of their usage (“arbitrary marks”), such as Time magazine or Diesel for a bookstore, and

• words that cleverly connote qualities about the product or service without literally describing these qualities (“suggestive or evocative marks”), such as Slenderella diet food products or Netscape World Wide Web Browser.

By contrast, marks that consist of common or ordinary words are not considered to be inherently distinctive, absent a showing that consumers recognize them because of their long use. Such weak marks receive less protection under federal or state laws. Typical examples of common or ordinary words are:

• people’s names (Pete’s Muffins, Smith Graphics)

• geographic terms (Northern Dairy, Central Insect Control), and

• descriptive terms—that is, words that attempt to literally describe the product or its characteristics (Rapid Computers, Clarity Video Monitors, Ice Cold Ice Cream).

As mentioned, it’s possible for ordinary marks to become distinctive because they have developed great public recognition through long use and exposure in the marketplace. A mark that has become protectable through exposure or long use is said to have acquired a “secondary meaning.” Examples of otherwise common marks that have acquired a secondary meaning and are now considered to be distinctive include Sears (department stores), Ben and Jerry’s (ice cream) and Park N Fly (airport parking services).

Related terms: arbitrary mark; coined terms; color used as mark; color used as an element of a mark; composite mark; descriptive mark; distinctive mark; geographic terms as marks; non-profit corporations and trademarks; personal names as marks; phonetic or foreign equivalents for marks; pictures and symbols used as marks; secondary meaning; slogans used as marks; state trademark laws; strong mark; suggestive mark; surnames as marks; trade name; weak mark.