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Quinto, David W.; Alden, Anthony P. --- "‘Descriptivess’ in American Trade Mark Law" [2006] ELECD 240; in Phillips, Jeremy (ed), "Trade Marks at the Limit" (Edward Elgar Publishing, 2006)

Book Title: Trade Marks at the Limit

Editor(s): Phillips, Jeremy

Publisher: Edward Elgar Publishing

ISBN (hard cover): 9781845427382

Section: Chapter 12

Section Title: ‘Descriptivess’ in American Trade Mark Law

Author(s): Quinto, David W.; Alden, Anthony P.

Number of pages: 14

Extract:

12. `Descriptiveness' in American trade
mark law
David W. Quinto and Anthony P. Alden

1. DEFINITION OF `DESCRIPTIVE'
The centrality of `descriptiveness' in United States trade mark law cannot be
exaggerated. A term that is judicially considered too descriptive of a product
or service may simply not be granted trade mark protection or, if subject to
protection, may encounter formidable defences to infringement claims. Yet
no aspect of American trade mark law is as dependent on the eye of the
beholder as the determination of whether a term is descriptive.1 As the
Second Circuit Court of Appeals has observed, `where most of the trade
mark battles are fought are [where] the terms which are primarily descrip-
tive'.2
Descriptive terms are distinguished within the spectrum of trade mark
distinctiveness from `generic' and `suggestive' terms. A generic term `refer[s]
to the genus of which the particular product is a species',3 such as SHRED-
DED WHEAT (baked wheat biscuit)4 or FIRST AID (bandages and other
medical items).5 These terms lack any distinctiveness and naturally cannot
serve as a trade mark under any circumstances.6 In contrast, a suggestive term


1 The Second Circuit has conceded that making such a determination is `tricky
business at best', Banff, Ltd. v Federated Department Stores, Inc., [1988] USCA2 224; 841 F.2d 486, 489
(2d Cir. 1988), and the Fifth Circuit has admitted that the classification is frequently
difficult to make: Soweco, Inc. v Shell Oil Co., [1980] USCA5 1139; 617 F.2d 1178, 1183 (5th Cir. ...