Suggestive Trademark

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Suggestive Trademark

A suggestive trademark may be the sweet spot for choosing a trademark for a business.  Along with fanciful and arbitrary trademarks, suggestive trademarks are viewed as inherently distinctive. This makes it easier to fight against instances of infringement.  Since there is some connection between the trademark and the goods or services, these types of trademarks are also beneficial from a marketing perspective.

When reviewing all types of trademarks, though, suggestive words may be harder to register at the U.S. Patent and Trademark Office and don’t provide the maximum level of protection from a legal perspective.  In fact, competitors and infringers may claim that such a trademark isn’t protectable at all.

Suggestive Trademark Examples

Suggestive trademarks require some mental pause to associate them with the underlying goods or services.  The following are examples of suggestive trademarks:

  • Jaguar: Suggests cars that are very fast.
  • Coppertone: Suggestive of the resulting skin color after using this tanning lotion.
  • Microsoft: Suggests software for small computers.
  • Netflix: The subscription service suggests movies (‘flicks’) that are ordered online.
  • Greyhound: The company uses a fast dog to signify fast travel.
  • Citibank: Suggestive of financial services in cities.
  • KitchenAid: Products that provide aid in the kitchen.
  • Airbus: The company manufactures ‘buses’ for the air (i.e. airplanes).

Consumers who encounter these brand identifiers for the first time may not immediately know the product or service being offered, but will be able to figure out the association. This isn’t due to the names being outright descriptive, but instead because a bit of imagination can create the link.

Suggestive Trademark Definition

A suggestive trademark is a trademark that has some association to the product or service at issue but it is not immediately clear.  Suggestive product identifiers do not directly describe a quality or characteristic of a company, product or service. They instead use terms or designs that suggest specific qualities and traits. For a trademark to fall under this umbrella, consumers must need to use their imaginations to make the mental connection between trademark and brand.

Suggestive trademarks differ from other strong trademarks in the following ways:

  • Fanciful trademarks: A fully word that’s created solely for a brand is considered fanciful. Suggestive trademarks do not fall under this umbrella because – although they’re distinct – they still utilize common terminology.
  • Arbitrary trademarks: Brand identifiers that use common aspects to identify unrelated brands are considered arbitrary (e.g. ‘Apple’ for a computer brand). Suggestive trademarks cannot be arbitrary because – even with imagination required – an associated linkage still exists.

Suggestive, arbitrary and fanciful trademarks all provide appropriate levels of protection. Due to the use of common and relatable words, though, the former provides the least amount of defense against potential infringement. Those who misuse these identifiers may try to claim, for instance, that the registration is descriptive when facing trademark litigation.

The chance also exists that you may receive a cease and desist letter from someone claiming you’re infringing upon their brand. Since the very nature of the term suggestive indicates that others could create the same mental linkage, it’s possible that comparable trademarks could already exist. If they’re even slightly similar, you may have an issue.

If you receive such a warning, consider the following aspects:

  • Which trademark has been in use longer? If courts find infringement has occurred, the senior trademark typically comes out on top.
  • Would a likelihood of confusion among consumers exist with both trademarks in use?
  • How similar are the two trademarks in question?
  • Are the products or services offered under these trademarks similar?

The courts will examine several factors if you end up facing litigation over suggestive trademark usage, but these considerations are among the most important. Due to their suggestive nature, it wouldn’t take many parallels for courts to decide that the competing identifiers are too similar.

Are Suggestive Trademarks Inherently Distinctive?

The suggestive trademark definition shows that – regardless of how much imagination is required for a mental connection – these brand identifiers are inherently distinctive. This means that their first usage in commerce would inform consumers that the trademark is a source identifier rather than a product or service descriptor.

It’s unnecessary to prove that distinctiveness has been acquired for suggestive trademarks. When words related to the product are utilized, however, consumers may simply think they are describing or identifying the product/service or its overall category. This would mean the trademark is neither suggestive nor inherently distinctive.

There are two types of trademarks that don’t provide as much protection as suggestive identifiers because they don’t have inherent distinctiveness:

  • Descriptive trademarks: These are terms that directly describe aspects of a product or service. “Refreshing,” for instance, would be merely descriptive of a brand that water.
  • Generic trademarks: Any trademark that’s considered generic simply describes the category/type of product or service being sold. “Blue jeans” and “automobile” would be considered generic.

While they do provide a high level of protection due to their inherent distinctiveness, suggestive trademarks could also lose this characteristic over time. If a company fails to defend against generic use of its brand identifiers, for instance, genericide could occur. This will result in the loss of all federal protections and the allow competitors to freely use the trademark.

Even if you come up with an overtly creative way to identify your brand, though, it’s necessary to ensure similar usage isn’t already occurring. This makes a trademark search – one that expands beyond the USPTO’s database and includes common law uses – an essential part to the registration process.

Once the USPTO examining trademark attorney agrees that your trademark is acceptable, you only need to survive a 30-day opposition period prior to registration. After that point, all that’s necessary to maintain your trademark is occasionally renew it.  Succeeding in these areas can provide indefinite protection.

Descriptive vs Suggestive Trademarks

The disparities already discussed regarding descriptive trademarks and suggestive trademarks – such as inherent distinctiveness and levels of protection – are some of the most significant differences between these two brand identifier types.  The two also differ significantly in the area of registration likelihood. If a trademark is truly suggestive, it has a good chance of being registered so long as it is not already in use for similar goods. This isn’t the case for descriptive identifiers. Rejections based on mere descriptiveness are common for this type of trademark.

Trademark Disclaimer

It’s still possible to register descriptive aspects in your brand identifier. To do so, you’ll need to submit a trademark disclaimer. This alerts other potential applicants that you’re not claiming exclusive rights over certain portions of your trademark.

It’s possible that suggestive trademarks may also need such a disclaimer. Jaguar Cars, for instance, suggests that the product is fast. The term ‘cars,’ however, is generic in nature. As such, a disclaimer as to that word would be required.

Can Descriptive Terms Become Suggestive Trademarks?

The line between descriptive and suggestive trademarks can sometimes be blurry, but a brand identifier cannot technically be considered both. The very definition of ‘suggestive’ removes the possibility that a term or design could also be descriptive. There are some nuances, however, due to the possibility of acquired distinctiveness.

Any descriptive trademark that develops a secondary meaning in the mind of consumers can receive direct protection on the Principal Register. For this to occur, however, a specific brand must come to mind when the public encounters the identifier. When this transition takes place, the trademark is treated as if it’s suggestive for protection purposes.  Otherwise, the trademark must be registered to the supplemental register.

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