Trademarks and Brands

Lee J. Eulgen and Bari L. Nathan, Guest Bloggers

Lee J. Eulgen is a partner in Neal Gerber & Eisenberg’s Intellectual Property Group where he focuses his practice on intellectual property litigation, negotiation, and counseling, including trademark, copyright, patent, right of publicity, trade secret, trade dress, domain name, entertainment, unfair competition, and privacy-related matters. Bari L. Nathan is an associate in Neal Gerber & Eisenberg’s Intellectual Property Group where she focuses her practice on trademark and copyright matters including clearance, registration, prosecution, portfolio management, enforcement, and litigation.

Website: http://www.nge.com

Email: leulgen@ngelaw.com

Author's Posts

Booking.com: The Potential Paved Road to Protecting Highly Descriptive and Generic Terms Combined with Top-Level Domain Extensions

by Lee J. Eulgen and Bari L. Nathan, Guest Bloggers on Tuesday, 20 March, 2018

A word or logo can only function as a trademark if it is distinctive (i.e., capable of identifying and distinguishing the goods and services with which it is used from others’ goods and services) and, as most readers of this blog will readily recognize, a trademark’s distinctiveness ranges along a spectrum, sometimes called a hierarchy of marks. In order from least distinctive to most distinctive, the categories of distinctiveness are: generic, descriptive, suggestive, arbitrary, and fanciful. 

Marks that are suggestive, arbitrary, or fanciful are deemed sufficiently distinct to automatically function as trademarks. Descriptive marks, on the other hand, are not considered inherently distinctive, and can only function as a trademark if they have obtained secondary meaning (also known as acquired distinctiveness) in the minds of consumers. Generic terms are common identifiers for a type or category of product or service (e.g., “E-MAIL” used to identify an e-mail service, or “FITNESS CENTER” used to identify fitness centers or gyms) and, as such, the law does not allow these types of terms to be protected as proprietary to one party and registered as trademarks. This treatment of generic terms is based on the principle that people and companies deserve the right to accurately identify and describe their products and services, and granting a single party an exclusive right to a generic term would unfairly impede competition. 

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Topics: domains, trademark

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The title says it all. This is a blog about trademarks and brands, expanding the expertise and resources you’ve come to expect from Corsearch. From expert research tips to the inside scoop on productivity solutions, join the conversation about trademarks and brands.

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