In the last issue we covered federal and state registrability of trademarks used on products and services involving the manufacture, distribution, or sale of cannabis products. In this issue, we delve into what makes an enforceable trademark.
Not all trademarks are created equal, and most of them can be divided into the following four categories, from strongest to weakest. Up first are “fanciful” trademarks, which are terms consisting of artificial, created words such as “Kodak,” “Xerox,” “Google,” or “Amazon.” Because Fanciful trademarks are made up, they have no meaning, so, the mark owner will have to make a larger effort in terms of advertising to educate the public that the mark is used to identify and distinguish that specific provider’s product or service, as distinguished from another’s. Regardless of your business’s goals, this concentrated effort is well worth it in that fanciful trademarks enjoy the broadest scope of legal protection insofar as eligibility for state and federal registration and protection against third-party use or “infringement.”
Second, are “arbitrary” trademarks, which are ordinary terms or images used on completely unrelated products or services to identify a specific manufacturer, such as “Coach” as used on handbags and leather goods and apparel, or “GAP,” used to identify GAP branded clothing and related services. Like fanciful trademarks, arbitrary trademarks are considered inherently distinctive in identifying and distinguishing a particular provider’s product or service from another. As with fanciful trademarks, however, owners of arbitrary trademarks will also need to invest time and money into educating the consuming public on the association between the mark and the product or service. But, once that connection is made, arbitrary trademarks enjoy the same broad scope of protection as fanciful marks.
Coming in third, yet still significantly protectable are “suggestive” trademarks, consisting of terms or images that require the use of imagination to reach a conclusion as to the nature or quality of the good or service that mark is used on. The “Downy” trademark, consisting of a word that is a play on the word “Downy” in combination with a design trademark of an image of a cuddly teddy bear amidst a pile of freshly washed clothing would be such a mark. The strength of this mark is evident in that the combination of both types of trademarks takes imagine that this specific manufacturer’s fabric softener will make your clothes as soft as down feathers and as cuddly as a soft teddy bear amidst a pile of bright, freshly washed clothing, incentivizing you to make the purchase. Another such successful trademark would be “Staples,” used to identify the manufacturer of office supplies and goods, including, but not limited to, actual staples.
Trailing behind as being entitled to the least amount of protection are merely “descriptive” marks, which convey an immediate idea of the ingredients, qualities or characteristics of a good or service. Descriptive trademarks describe the (1) purpose, function, or use of the goods; (2) the size of the goods; (3) the class of users of the goods; (4) a desirable or advantageous characteristic of the good or service; (5) the nature of the good or service; or (6) the end effect upon the user. A descriptive trademark may nonetheless still be legally protectable if its owner can prove the mark has acquired a “secondary meaning” by being associated in the minds of consumers as identifying the provider as the source of that specific product or service because it has been widely and exclusively used by such provider over a considerable length of time. One such trademark for example would be “Sharp,” as used on televisions and electronic products.
Last are “generic” marks, which are entitled to no protection whatsoever. These can be terms that are so commonplace they can never be used to distinguish a particular provider’s product or service from another’s. Another way for a trademark to become generic is to become a common or household name for a particular type of product such as “Chapstick”, “Kleenex”, or “aspirin,” for example. In short, generic trademarks have over time become so weak from being used by the public to identify a genre or category of product or service that they are not protectable whatsoever. For independent reasons, trademarks consisting of someone’s name, particularly when combined with a suggestive or descriptive mark are LAO unenforceable.
So, how does the above guide you in terms of choosing your business’s primary or even secondary trademark? Obviously, the first choice is to go to with a fanciful or arbitrary trademark and to stay away from suggestive or merely descriptive trademarks. But, this becomes incredibly difficult when dealing with cannabis products or services because the natural inclination of a provider is to use the trademark to suggest or describe the product or service offered. As a general rule of thumb, remember that if your trademark did not take long to come up with, chances are that someone else has already thought of or used it, or likely will down the line. Equally applicable, is the rule that you should not use a trademark, or any part thereof (including any word or design) that is being used by another provider. With the foregoing in mind, one can see that use of the term “cannabis” or any variation thereof will most likely lead to the trademark being construed as either suggestive or descriptive, neither of which is a strong candidate for legal protection.
Additionally, and ideally, you will want to choose a trademark that is not confusable with that of another provider’s, so as to avoid any likelihood of confusion, resulting in liability for violating or “infringing” another trademark owner’s rights. The test for trademark infringement is whether the mark at issue is likely to confuse, deceive, or cause a mistake by a consumer in the applicable region as to the source or origin of a specific good or product, including confusion as to sponsorship or affiliation. When determining whether a likelihood of confusion exists, courts look to factors such as, but not limited to: (1) the similarity in sound and appearance of the two marks involved; (2) the degree of care typically used by purchasers of the respective products (e.g., someone picking up chicken noodle soup will not shop for that product in the same way as someone shopping for a computer); (3) the alleged infringing party’s intent in adopting the trademark at issue (i.e., was that party intending on taking advantage of another trademark owner’s goodwill with consumers and passing off its products as those of that owner?); (4) the strength of the allegedly infringing trademark (in accordance with the principles discussed above); (5) the proximity of the products or services involved and the chance that a prior user will bridge the gap between them and assume the owner of the infringing trademark is the owner of the original trademark; (6) the channels of trade and methods of advertising for the respective goods and services; and (7) evidence of actual confusion, typically resulting from a consumer pole in the relevantly geographic area.
Significantly proof of any of the foregoing factors or actual consumer confusion is not required in order to “infringe” another’s trademark, nor is it necessary that the parties actually be in competition with one another. In fact, the inquiry as to whether a trademark infringes another is extremely case-specific and may even seem to be on an ad hocbasis. Thus, to limit liability, it is important for businesses to work with a trademark attorney and have a clearance trademark search or searches performed in advance of adopting a trademark, or sinking finances into marketing and advertising such trademark, especially within the rapidly growing and ever-changing cannabis industry. Tune in next time for a discussion of relevant case law and its impact on the foregoing principles.
Evolution Magazine: July, 2020
 Mo. Intellectual Property § 2.3 (MoBar 2004); see also https://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkStrengthFactSheet.aspx.
 Mo. Intellectual Property § 2.15 (MoBar 2004) (2004).