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Factors for determining the distinction of a mark

Cross Commerce Media, Inc., v. Collective, Inc.

Two companies involved in the media industry sought the rights to a trademark that included the word “Collective”. The trademarks of each company were not identical but similar and as both operated in the same area it became important to resolve the matter. CCM said that CI’s mark was descriptive and in response CI said that CCM’s mark was suggestive.

“Trademarks, whether registered or unregistered, are grouped for purposes of analysis into four categories of increasing inherent distinctiveness: generic, descriptive, suggestive, and arbitrary or fanciful.”

These distinctions are important due to the evidentiary burden that each carries, by defining CI’s mark as descriptive, protection is stiff available through the Lanham Act; however, the trademark holder must demonstrate that “the mark’s ‘primary significance’ to relevant consumers is to identify [the trademark holder as] the source of the product.”

On appeal, the Appeal’s Court found that CI’s mark was actually suggestive which meant that the mark “requires consumers to employ imagination, thought and perception to reach a conclusion as to the nature of goods,” opposed to an “immediate idea” of the product from the mark.

“As a general matter, information about how third parties have used a mark in commerce may shed light on its inherent distinctiveness in several ways:”

  1. A mark is more likely to be descriptive if the trademark would inhibit competitors from using descriptions of their competing products; thus, the repeat use of the word involved in the trademark by competitors is constructive.
  2. If the mark brings to mind a wide range of products then it is more likely suggestive.
  3. Prior distinctions of the mark by the Patent and Trademark Office.

This article is provided for informational purpose only and is not intended as a form of legal advice. If you have any questions on the subject matter of this article, call Roland Tong, at 949-298-6867 or email Mr. Tong at [email protected]. Mr. Tong has been obtaining patent, trademark, copyright, and trade secret protections for his clients since 2001. He has represented a wide range of clients from start-up companies to Fortune 500 companies in a wide range of industries.