Posted by | December 07, 2010 | General | 2 Comments

After reading my post on Lamebook v. Facebook, Malika asked “What about something like Cheeseburger?”

I like Cheeseburgers.  As far as using CHEESEBURGER as a trademark, that depends on the nature of the product or service on / in connection with which the term will be used.  A CHEESEBURGER law firm, while ridiculous, would be a highly protectable, strong service mark.  A CHEESEBURGER restaurant would not be.  Trademarks have varying degrees of “strength,” which determines their level of protectablity.

Fanciful — marks that are completely made-up words, like GOOGLE or STARBUCKS

Arbitrary — marks that have no relationship to the services offered under them, like APPLE computers or SUN Microsystsems

Suggestive — marks that require some thought or imagination to determine what the product / service is, like MICROSOFT for microprocessing software

Descriptive — marks that describe a feature, purpose or characteristic of the product / service (not initially protectable as a mark, must show that the mark has acquired some brand recognition, or “secondary meaning,” like LEKTRONIC for electronic equipment

Marks that are arbitrary, fanciful or suggestive are considered “inherently distinctive,” which means that they acquire brand recognition and therefore trademark protection upon adoption.  Inherently descriptive marks may be registered on the Principal Register.  However, marks that are descriptive must acquire distinctiveness through use by the trademark owner.  Descriptive marks cannot be registered on the Principal Register and instead must be registered on the Supplemental Register, which is like a waiting room for brands that are trying to acquire the brand recognition needed to obtain trademark protection.  Many descriptive marks are presumed to have acquired distinctiveness after having been used exclusively and continuously for 5 years after registration is granted.  If the mark is highly descriptive however, then the brand owner may have to prove acquired distinctiveness through evidence such as marketing budgets, brand exposure / recognition studies and third party declarations.

Sometimes trademark professionals lump Generic terms into the discussion of the strengths of trademarks, but since generic terms — the name of the type of object or service, like glasses or lawyers — are incapable of becoming a trademarks, I am including them below the discussion of trademark strengths.

So, the answer to “What about Cheeseburger?” is the answer to many legal questions:  it depends.  And as usual, with knowledge of more specific facts, the answer will become more definitive.

About Lara

Lara Pearson is a trademark attorney with Exemplar, where she also serves as the firm's Sustainability Steward. Lara's legal practice focuses on trademark and copyright law, including: intellectual property audits; trademark search & clearance; trademark and copyright registration & maintenance; intellectual property transfers; transactional work; and dispute resolution, including litigation when necessary. Lara primarily represents other social enterprises -- those leveraging their businesses and brands as catalysts for positive social and environmental change. Such businesses engage in CSR (Corporate Social Responsibility) to have a positive "triple bottom line" of people, planet and profit. As Exemplar's Sustainability Steward, Lara works with others in her law firm to measure and reduce the firm's carbon emissions and encourage engagement in social responsibility initiatives, including pro bono legal work and volunteering. Lara is a proud member of the Social Venture Network. Brand Geek is a member of 1% for the Planet and a Certified B Corporation, whose Incline Village office is certified under the regional Keep the Sierra Green program. Exemplar Companies is the most innovative professional services firm in the New Economy. Our unique, diversified expertise spans the disciplines of corporate law, business advisory, and capital/investment banking to better meet the needs of our high-potential customers. We have assembled a comprehensive suite of service to meet the complex issues facing companies in today’s challenging business environment. Our unique, holistic approach ensures the growth and success – and greatly increases the competitive advantage - of our customers. The Exemplar team is comprised of knowledgeable, highly skilled experts in a wide range of industries and disciplines. They work closely with our customers to provide trusted advice, incomparable support, expert guidance and the ultimate competitive advantage as they accelerate their businesses and position themselves to transform industries.


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