Types of Trademarks – The Super Mark
Most people who want to get a trademark registered, search for the Super Mark. What is this Super mark? Super mark is the Invincible Superman of the Trademark world, i.e. it is a mark that would less likely to be objected to by the Registry.
The only kryptonite for this mark would be any form of infringement and third party oppositions
Types of Trademarks
This article is primarily aimed towards deciding upon which mark can be considered as the perfect mark. It is well known that the marks are categorized as (a) generic; (b) descriptive; (c) suggestive; (d) arbitrary; and (e) fanciful.
The origin of this form of categorization of trademarks came into being in the famous Abercrombie & Fitch Co. vs. Hunting World, Inc., the decision of which lead the courts to classify marks into the given five different categories. In order to decide upon the Super mark we need to understand a little about the five categories of the marks.
A generic mark is one that has been determined on the basis of the genre of the good. For example I want to buy Cider punch. Now any human with average intelligence would know that I want to buy a can of apple juice with a fancy name. Generic marks don’t quite make it to the top. A generic mark can easily be objected, rejected, opposed and squished by an infringement road roller. Therefore always advisable to not name a good on the basis of its Genre. Using the genre for naming a mark would be pure stupidity.
Another naming style for trademark. It is a mark that purely describes the essence of the goods or services, but as said by the court, it needs to be followed by a secondary word or term in order to completely be able to decide upon a name e.g. “Hot” Heater company, or “Cold” Air Conditioners. Still not a stronger mark either. It is more of calling hamster pet store as “Cute and Furry” hamster shop. In terms of strength of the mark, it is still potentially very weak, hence definitely not the Super mark.
Being always open for suggestions, is any day good. Indeed a true statement in terms of suggestive marks, because these marks are made in a way that would talk about the qualities of the goods or service in a more creative manner, which in the process of describing a good, would make it quite distinctive but still somehow stay close to the qualities of the good or service. But yet, this still does not become the Super mark as it can be objected. For example, using the name “Black and White on ice” for a Penguin reserve.
A perfect example for this form of mark would be “Hawkeye” a name given to a super hero who looks like a modern age purple colored Robin Hood. In more practical terms, the name “Apple” for computers and phones, and “Blackberry” for suits. These are good trademarks. The reason is that arbitrary marks are used when the goods or services are given a name that does not even match to the qualities, genre, or anything related to that goods. Even in the cases of Blackberry phones and Blackberry Suits, both belong to different classes, and both have totally different kind of goods, and both the marks also look super different. And as far as Apple is concerned, it is a fruit for a computer. And the best part is that people are able to identify an arbitrary mark by jut looking at the mark. Definitely the Super mark.
If Super man has a cousin named Super girl, then an arbitrary mark has a sister named Fanciful mark. A fanciful mark is a created mark, i.e. if an arbitrary mark if not connected to a good has a different meaning, then a fanciful mark when not used for a good has no meaning at all, that is a fanciful mark is a term which is created. But just like an arbitrary mark, it has no relation with that of the good or service the mark is being used for. Perfect example for fanciful marks would be “Kodak”.
Therefore what can be learnt from the Abercombie categorization is that if any mark is arbitrary or fanciful, it is bound to become the Super mark. The strength of an Arbitrary mark, can be seen in the case of Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee, where the term “Veuve” meaning “Widow” was held to be an arbitrary term when applied to champagne and sparkling wine, and therefore making it conceptually strong as a trademark. In comparison to generic marks, an arbitrary or a fanciful mark does not signify the genre of the product or service. In comparison to descriptive marks, an arbitrary or a fanciful mark does not describe the product or service. While comparing with a suggestive mark, the arbitrary or the fanciful mark has no indirect relation with the product or service, thus making it more distinctive than any other form of trademark. Therefore having a known word or a newly created word used in naming a good or service in an unexpected way would any day get the mark registered without any hassles as seen in the case of Nautilus Grp., Inc. v. Icon Health & Fitness, Inc.
Hence the real time super marks would be the arbitrary and the fanciful marks.