Sarah Oglesby

3 February 2020

TO: Supervising Attorney

FROM: Associate Attorney
RE: Trademarks as Indicator of Source

Dear Supervisor:

I have prepared the following memorandum to discuss the usage of trademarks as an indicator
of source.

Trademarks

First, we must discuss what a trademark does. According to the Lanham Act, codified in 15
U.S.C. § 1127, a trademark is any word, name, symbol, or device, or any combination thereof,
used by any person as a mark to identify and distinguish his or her goods from those
manufactured or sold by others and to indicate the source of the goods, even if that source is
unknown. Similarly, a service mark identifies and distinguishes the services of one person from
the services of others.

Trademark law is in place to protect both consumer and owner interests in a number of ways.
The main purpose of issuing trademark protection is to prevent confusion and deception as to
the source of goods sold on the market. This in turn encourages companies to make high
quality goods with the assurance that their reputation will be protected from infringers seeking
to capitalize on their hard-won good will.

In order to be protected, a trademark must have either acquired or inherent distinctiveness

that sets it apart from other sources of goods. As set forth in Abercrombie & Fitch Co. v.
Hunting World, Inc., there are five levels of distinctiveness that can be achieved through
trademark usage known as the “Abercrombie Spectrum”. These five levels include: generic,
descriptive, suggestive, arbitrary, and fanciful – with the amount of protection afforded
increasing at each level.

Generic terms refer to the genus of the product or services offered without any further
distinctiveness. Generic marks are never protected because the terms are too widely used to
refer to any one source or meaning for the goods such as “tissue” or “battery”.
Descriptive terms tend to describe the ingredients or characteristics of the product, but are one
step above simply naming it. An example of this would be “International Business Machines” or
“IBM”. Descriptive terms may be protected to the extent that they achieve secondary meaning.
Secondary meaning occurs when the term no longer refers to the general goods offered, but
calls to the mind of the consumer the specific source of goods. Most consumers recognize IBM
as much more than just an ordinary computer company thanks to the secondary meaning they
have achieved through years of building up a strong reputation.

Suggestive terms require some imagination, thought, and perception to reach a conclusion as
to the nature of the goods; some suggestion of qualities, but not so direct as a descriptive term.
An example of this would be “Microsoft”. The term seems to imply something to do with
computers, but does not outright describe or name any specific type of computer service.
Suggestive marks are protected because they are distinctive enough for consumers to associate
their goods with the specific source.

Finally, arbitrary and fanciful marks are often categorized together. An arbitrary mark has no
connection between the product and the word’s literal meaning; thus any association is tied to
the producer, rather than the mere type of product. Two examples include Apple (fruit vs.
computers) and Nike (Greek goddess vs. athletic shoes). Fanciful marks are similar to arbitrary
in that they have no connection in literal meaning. Fanciful marks are typically coined or made-
up words or phrases such as “Exxon” or “Google”. Arbitrary and fanciful marks are protected
because they inherently have secondary meaning in the minds of consumers.

Secondary Meaning

An important part of analyzing whether a mark is an indicator of source or merely a generic or

informational term is whether the mark has achieved secondary meaning. As stated above,
secondary meaning occurs when the term brings to mind the specific source of goods rather
than just an idea of what the product is itself. Generic marks are never able to attain secondary
meaning, but descriptive marks may acquire a level of distinctiveness that leads to some
trademark protection. Courts look to the length and manner of the use of the mark, volume of
sales, and even survey evidence to determine whether a mark is sufficiently distinctive to
warrant protection.

Suggestive, arbitrary, and fanciful marks are considered inherently distinctive because of their
decreasingly close semantic relationship with the product or service they represent. Fanciful
marks automatically have secondary meaning since the word is made-up and therefore has no
primary meaning to begin with.
 Indicator of Source

The final point of analysis brings us to determining when words or phrases used in association
with established brands are informational, and therefore not protectable, or distinctive
indicators of source. For example, Wal-Mart attempted to register the phrase “Investing in
American Jobs” as a service mark. However, the TTAB found that the phrase was too generic
and informational to qualify as a service mark for Wal-Mart specifically because it did not
indicate to consumers that Wal-Mart was the source of the mark. In contrast the phrase “I’m
Lovin’ It” has near-universal source recognition as being a mark for McDonald’s hamburgers.
When consumers hear that phrase, they immediately think of the golden arches and not just
some random thing that they personally love.

Similarly, catch phrases can also be more or less distinctive in indicating a source. The Dave
Johnson case in which the sportscaster attempted to register his coinage of the phrase “and
down the stretch they come” may have called his name to mind for certain viewers of horse
racing over the last four decades, but it does not automatically register that way for all
consumers. In fact, other sportscasters have used the same or similar phrase in their own line
of work, not necessarily related to horse racing specifically. On the other hand, the phrase
“Here’s Johnny!” may have been more successful in indicating the source as being Johnny
Carson’s late night catch phrase because he used it every night on his show for many years and
was watched by millions of Americans.

The phrase “Thoughtful Perfumery” that the client wishes to register in association with her
established perfume brand seems to include only generic or descriptive words that do not
automatically indicate her business as being the source behind the collection. It indicates that
the collection of perfumes has been carefully put together and even curated from her larger
collection, but it does not have any further meaning to consumers that would tie the words
themselves to the source of the goods. Therefore, “Thoughtful Perfumery” is likely not a phrase
that would achieve trademark protection unless through continued use and consumer
experience it managed to ascend to secondary meaning.