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What does "The Registered Mark is clearly suggestive of the Registrants services" mean?

Bronx, NY |

I came across this term in a google search "The Registered Mark is clearly suggestive of the Registrants services" what does it mean?

1.Does it mean the services are different from the mark? meaning it is a solid arbitrary mark.
2.Does it mean the services and mark are the same? meaning it is not a solid arbitrary mark.

can anyone give me examples.

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Attorney answers 5

Posted

It means number 2. For example "Doland legal services" would be descriptive (and suggetive) of what I do.

The above is general legal and business analysis. It is not "legal advise" but analysis, and different lawyers may analyse this matter differently, especially if there are additional facts not reflected in the question. I am not your attorney until retained by a written retainer agreement signed by both of us. I am only licensed in California. See also avvo.com terms and conditions item 9, incorporated as if it was reprinted here.

Kyle Hanson

Kyle Hanson

Posted

No, that is description BUT NOT suggestive. In trademark-speak, "descriptive" and "suggestive" are separate categories. They are separated by a thin, ill-defined line, but they are certainly separate categories.

Michael Charles Doland

Michael Charles Doland

Posted

Thanks Kyle, my fingers got ahead of my brain!

Kyle Hanson

Kyle Hanson

Posted

No problem =)

Posted

A mark can be registered only if it is distinctive--not arbitrary. A suggestive mark is kind of midway between descriptive -- not acceptable -- and fanciful -- which is acceptable. It is "weaker" than fanciful mark, and thus more amenable to being ignored in the face of assertions of infringement, especially when the claimed infringer is in a bit different line of work or geographically remote.

Now, you probably had a reason other than academic for posing your question. Let me say that DIY branding is a good way to get a brand that cannot be registered as trademark. Better is to involve a TM attorney while you are picking a brand, not later just to try to ram it through the process.

Licensed in Maryland with offices in Maryland and Oregon. Information here is general, does not create a lawyer-client relationship, and is not a substitute for consulting with an experienced attorney on the specifics of your situation.

Posted

Another example: Coppertone® for sunscreen is suggestive of the product. It is not descriptive or arbitrary.

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Posted

I would be reluctant to go into more details, but this the issue you are referring to usually comes into question when the distinctiveness of a mark is under attack. A mark is suggestive, if imagination, thought or perception is required to reach a conclusion on the nature of the goods or services. Therefore, such mark is registrable on the Principle Register without a showing of acquired distinctiveness.

Posted

In the words of the USPTO:

Arbitrary marks: "Comprise words that are in common linguistic use but, when used to identify particular goods or services, do not suggest or describe a significant ingredient, quality or characteristic of the goods or services (e.g., APPLE for computers; OLD CROW for whiskey)."

Descriptive mark: "A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services. If a mark is merely descriptive or deceptively misdescriptive of the goods or services to which it relates, the mark will be refused registration on the Principal Register under §2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1). Examples of descriptive marks include: MEDICAL GUIDE for website services featuring medical guides, DENIM for jeans, and SPICY SAUCE for salsa."

Suggestive mark: "A mark that, when applied to the goods or services at issue, requires imagination, thought or perception to reach a conclusion as to the nature of those goods or services." As indicated by one of my colleagues, Coppertone® is a suggestive mark because it doesn't explain what the product is (i.e., a tanning lotion and sun screen), but, after seeing an ad, the consumer can easily perceive what the product does.

Any answer or other information posted above is general in nature and is not intended, nor should it be construed, as legal advice. This posting does not create an attorney-client relationship between you and the posting attorney, and you are urged to engage a qualified attorney who is licensed to practice in the relevant jurisdiction.

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