Question

What is the primary issue Courts are concerned with regarding trade symbols? Why? Explain the difference between a trademark being inherently distinctive versus a trademark acquiring secondary meaning in the marketplace. Why are firms concerned with their marks becoming generic in the marketplace?

Answer 1

Trademarks are unique representations of organizations to identify their products in the marketplace. For registering a trademark, a long procedure is to be undergone.

The primary issue courts are concerned while registering trademarks are: They will check if the trademark is already registered or if it is in the process of registration for some other organization. They will check if the products of the organization are available or not and it will also be checked if the trade mark proposed is the generic name of some product (like H2O for Water) or if it is confusing to the public (if it resembles some other trademark).

Inherently distinctive trademarks are trademarks that separates themselves from other trademarks. It can be a new symbol that does not resemble something that existed until then. Or a word or combination of words or a made-up word that is not in the dictionary which does not carry any specific meaning. For a trademark to achieve secondary meaning, the trademark must be descriptive. If the name of a trade mark involves some existing meaningful word, be it suggestive of something, like "Bitter", such trademarks will not be registered until it has some other meaning in the context like "bittery chocolate" or something like that.

Becoming generic means that the trademark of a product becomes the common trademark of similar products. As in the case of photocopy machines being mistakenly coined "xerox machines" or backhoe loaders being called as "JCBs". The issue here is that the goodwill and brand name of the product will benefit the sales of competitors. There will not be a distinctive place for the product in the market.