TRADEMARK: DISTINCTIVE OR DESCRIPTIVE?

 A layman’s guide to ultimate creativity

-     Written by Hajra Abdul Ghafoor

So, you have put in all your efforts into making this app that shows the calories and health info of food by mere scanning of the barcode or taking an image of your food. A lot of hard work went into training and testing until finally getting the finished product. You are happy and excited that finally it is the time to get an amazing experience and make this product your brand. All you have to do is, just name it and then you are good to go. So, you name your product, ‘Food Image Calorie Analyzer’, but as soon as you contact a legal advisor and try to register your trademark, turns out, he is very concerned!

But why?

We will get to the answer but firstly let’s get this common notion out of the way and lead to the question, does trademark comprise of a simple name or collection of words or is it more than that?

Trademarks are symbols and we know that humans might use as a symbol or device almost anything that can carry meaning, just about any conceivable thing can function as trademark.

Trademarks can be words like Minecraft or Bareeze, logos, designs like the Nike swoosh, sounds, containers like the shape of a perfume bottle, personal names like Taylor Swift. Even smells can be registered.

So, Trademarks can almost be anything that distinguish the product from others, and which signifies the source of the goods.

Beyond trademarks, there are also service marks which are very similar in that they distinguish one particular service. This would include the logos at the start of any entertaining movie or the music for Harry Potter or the theme for Game of Thrones.

There is also protection related to packaging of your product known as Trade Dress which refers to the characteristics of the visual appearance of the product or its packaging that refers to the source of the product to the consumers.

 This would mean that any milk brand, toilet rolls, toothpaste to technical brands, every product’s appearance should be distinct though it’s fulfilling the almost same purpose a bit differently.

LEVELS OF TRADEMARK NAMES:

There is a spectrum of trademark names that show the level of distinctiveness along each stage. This range is from unprotect-able to highly protectable!

GENERIC: These names include highly predictable names as orange for a fruit or dairy for milk etc.

DESCRIPTIVE: These, as the name suggests, explain the products’ functionality or features in the name, such as “Get in Chicken Out” for a shop that sells chicken.

SUGGESTIVE: These names require some imagination or perception to link them to the goods like ‘Onion Rings’ for a type of crisps, ‘Sheikh’ for middle-eastern food.

ARBITRARY: These are common words, you normally perceive of them as generic but they are used in in unexpected ways, like Apple for computers or Amazon for books or almost everything.

FANCIFUL: These are non-dictionary words such as Google, Bareeze and Kodak.

How is law responsible globally for the protection of trademark?

Though trademarks are often classified as intellectual property, the Supreme Court held, in the 1879 cases, held that the Congress has no power to protect or regulate trademark under the intellectual property clause of the Constitution. But using the commerce clause of the Constitution, they get to regulate the commerce with foreign states and several nations.

BASIC REQUIREMENTS OF TRADEMARK:

There are three basic requirements of trademarks:

1) This has been discussed above and says that a trademark has to be a symbol or device that a court or the patent office deems to qualify.

2) The trademark has to be in interstate commerce.

3) It has to identify the mark owner’s goods and distinguish them from others.

Now let's list the traits related to trademark and whether they should be associated or not! For this let’s consider a hypothetical situation of you calling your legal advisor suggesting what you think is right.

Initially you tell your app’s name as mentioned above, the ‘Food Image Calorie Analyzer’ app. His immediate response would be, “Well, the name is very generic, lengthy, can cause confusions, also it is very descriptive and there might be many other apps in the process which would lose the right to use the words even phonetically close to these.” This adds to your confusion, so you demand the explanation for each of his points. So, he starts explaining each point in detail:

How is the name CONFUSING?

The name of the involves ‘food, image, calorie and analyzer’, all these terms are very common in the marketplace and especially when it relates to fitness apps. It would be the same as if a company came up with the name SAMSONG and is selling mobile phones, you have to avoid this. This would have severe implications when it comes to medicines because you do not want the mixing up of names.

What has the name got to do with being LENGTHY?

First, the longer your name is the more words it consumes. Secondly, a longer name would suggest a phrase rather than sticking to a basic condition of a brand like Google, Microsoft etc.

Why is the name considered DESCRIPTIVE?

The name is acting like a complete definition to the functionality of the app, that is not permissible as mostly in analysing and explaining the concepts, we get to use quite common words and we have to avoid that. Also, consider Google or Victoria’s Secret, it is not linked directly to the niche they are using. But law agrees that a lot of feelings and work are linked to the product you are launching and so, you have to come up with a creative name having a backstory to your app, if you want a product reflecting name.

It has to be taken into account that the name you are suggesting should not be existing and be unique. You can verify this by consulting your legal advisor.

Also, it should not have any phonetic relation to any other product like you cannot come up with a name ‘Apel’ because it is phonetically close to Apple.

Now you have understood everything quite well, so you came up with a name, “piCal” that is a merge of “picture” and “calories” and there is no word in natural language like it. It also relates to the working of your app and now your legal advisor will check its relation to any existence and you will be good to go without any interruptions!

Still, if you have any queries, we at ONE IP INTERNATIONAL are always there for your help. Contact our team for any kind of assistance. We would be glad to be of any service!