Here at the Law Office of Vincent Miletti, Esq. and the home of the #UnusuallyMotivated movement, we take pride as a resilient and dependable legal services firm, providing such services in both a traditional and online, web-based environment. With mastered specialization in areas such as Employment and Labor Law, Intellectual Property (IP) (trademark, copyright, patent), Entertainment Law, and e-Commerce (Supply Chain, Distribution, Fulfillment, Standard Legal & Regulatory), we provide a range of legal services including, but not limited to traditional legal representation (litigation, mediation, arbitration, opinion letters, and advisory), non-litigated business legal representation and legal counsel, and unique, online legal services such as smart forms, mobile training, legal marketing, and development.

Still, here at Miletti Law®, we feel obligated to enlighten, educate, and create awareness about how these issues and many others affect our unusually motivated® readers and/or their businesses. Accordingly, to achieve this goal, we have committed ourselves to create authoritative, trustworthy, & distinctive content. Usually, this content is featured as videos posted on our YouTube Channel https://www.youtube.com/channel/UCtvUryqkkMAJLwrLu2BBt6w and blogs that are published on our website WWW.MILETTILAW.COM. With that, the ball is in your court and you have an effortless obligation to subscribe to the channel and sign up for the Newsletter on the website, which encompasses the best way to ensure that you stay in the loop and feel the positive impact of the knowledge bombs that we drop here!

As the authoritative force in Employment Law, it only seemed right to introduce one of the many upcoming series where we remain persistent in introducing a variety of topics, which will look to not only educate but also deliver in a sense that only Miletti Law® can. In this regard, this blog is Part III of our short series on “Trademark Clearance Search Checklist,” in which we explore another core area of trademarks. Objectively, this checklist acts as a hands-on guide that can be used to determine the suitability and availability of a client’s proposed service mark or trademark for federal registration and/or use in commerce. In that regard, this guide has two objectives; (1) how to evaluate the registrability and strength of a proposed mark and (2) to enlighten you about factors that need to be considered and the process of assessing the outcomes of a trademark clearance search. We have started with the first objective.

As we mentioned in Part I, it is a legal requirement under the Lanham Act (as codified under 15 U.S.C. § 1052) to conduct a trademark clearance search with the intention of evaluating and determining whether a proposed mark (intended for use) is confusingly similar or identical to other marks that may be already registered, awaiting registration, or unregistered. We also added that such a search starts with the collection of all relevant information concerning the proposed mark, which includes (1) mark identification, (2) meaning of the mark, (3) actual or proposed use of the mark, (4) date of first use, (5) considerations for the marketplace, (6) relative strength of the mark, and (7) eligibility for federal registration.

How to Evaluate the Registrability & Strength of Proposed Trademark Service Mark

In Part II, we discussed “Date of First Use” and “Considerations for the Marketplace” and explored their importance in conducting a trademark clearance search. Feel free to hit this link https://milettilaw.com/blog/f/evaluating-the-registrability-strength-of-proposed-service-mark-1 and learn more about these two key considerations of trademark clearance search. Accordingly, to move this discussion forward, we have explored the issue of “Relative Strength of the Mark,” which is another key area of consideration when conducting a trademark clearance search.

Relative Strength of the Mark

In the blog accessible at https://milettilaw.com/blog/f/trademark-protection-requirements-spectrum-of-distinctiveness, we hammered on the “Five Categories of the Spectrum Of Distinctiveness” in our discussion concerning “Trademark Protection Requirements.” One key thing we mentioned is that the level where a mark falls on the spectrum of distinctiveness determines its “strength” or level of distinctiveness. It turns out that the level where a mark falls on the spectrum of distinctiveness and the relative strength of the client’s proposed mark should also be analyzed as part of the trademark clearance search.

As discussed in the blog accessible through the link provided above, the following are the five categories of the spectrum of distinctiveness, starting from the weakest to the strongest marks.

  1. Generic Terms/Marks – Technically, a generic term does not identify the source of a given service or product. Rather, it merely identifies a common service or product and, therefore, is not protectable under the trademark law. It, thus, goes without saying that manufacturers should be entitled and granted the right to call their services or products by name. For instance, if a company that makes bread products uses the generic term “BREAD” or “ASPIRIN” for a specific bread or pain-reliever product, a third party cannot make trademark right claims on this generic term.
  2. Descriptive Marks – a descriptive mark merely describes an attribute or even the product or service itself. For example, the term “SPEEDY” could be used to describe a delivery service. While they do not qualify for instant protection under trademark law, descriptive marks are not considered inherently distinctive. However, it is possible for a mark to attain “secondary meaning” or distinctiveness and, therefore, achieve registrability status due to actual use in business. One key aspect of these marks is that courts have used the term “hazy” to describe the border between suggestive (discussed below) & descriptive marks. In this regard, courts use a double test when evaluating the category a mark falls into; (1) third-party use test and (2) imagination test.
  3. Suggestive Marks – these marks do not describe the nature of a given product, good, or service. Rather, they suggest or evoke a service or product’s attribute and are, therefore, inherently distinctive. These marks are used such that in order determine the nature of the service or good, consumers must engage their thought and exercise imagination. Perfect examples include “NETFLIX” for streaming services & “AIRBUS” for airplanes.
  4. Arbitrary Marks – an arbitrary mark is a real or common term used in an unfamiliar manner. A perfect example is the term “APPLE,” which is unfamiliarly used with computers. However, as you would easily note, the way the computer firm uses the word APPLE is nowhere close to the common meaning. Just like fanciful marks, arbitrary marks are also entitled to the broadest protection because they are inherently distinctive and, accordingly, the stronger along the spectrum.
  5. Fanciful Marks – finally, a fanciful mark is, by description, a made-up word and, thus, has no actual meaning. A perfect example is “KODAK,” which is just a short and catchy phrase that consumers find easy to remember and associate with the photography company. It is interesting to note that while fanciful marks are entitled to the broadest protection, they are inherently distinctive and, accordingly, the strongest marks along the spectrum of distinctiveness.

In the next blog and Part IV of this miniseries, we shall move the discussion forward and hammer on “Eligibility for Federal Registration,” the seventh & final key area of consideration, which comprises additional information that should be collected as part of a trademark clearance search.

Stay tuned for more legal guidance, training, and education. In the interim, if there are any questions or comments, please let us know at the Contact Us page!

Always rising above the bar,

Isaac T.,

Legal Writer & Author.