You know you’re in for a fight when 14 different law firms come together to launch an opposition--an administrative proceeding before the Trademark Trial and Appeal Board--against registration of your trademark application. This recently happened to a San Diego attorney, Ms. Candace Moon, specializing in the area of craft beer when she filed a federal trademark application over the mark “CRAFT BEER ATTORNEY” for “legal services” on January 15, 2015.
Why did 14 different law firms oppose this application? According to the petitions, the term “CRAFT BEER ATTORNEY” is generic and/or merely descriptive, and thus not eligible for trademark protection.
Generic v. Merely Descriptive Trademarks
Not all trademarks are created--or protected--equally. Trademarks are looked at on a spectrum of “distinctiveness.” “Distinctiveness” in the world of trademark law refers to how strong a trademark is, i.e., how well does it function as a source identifier of a product or a service. The more distinct a trademark is, the more protection it is afforded. “Distinctiveness” is determined on a spectrum, as shown below:
As you can see, three types of trademarks are “immediately protectable”-assuming there are no other issues--and should not receive a rejection for lack of distinctiveness at the United States Patent and Trademark Office (“USPTO”).
If a trademark is considered to be “descriptive” by an examining attorney (i.e., it immediately describes a characteristic or quality of the identified goods or services to the consuming public), it will be refused registration. However, a “descriptive” mark may become eligible for registration if the applicant can prove the trademark has “acquired distinctiveness/secondary meaning.”
This simply means the trademark owner has either been using it for so long (at least more than five years) and extensively that despite its descriptive characteristics, consumers see the trademark and identify it with one source, i.e., the trademark owner. American Airlines® has been in use for so long that when we hear the trademark, despite it describing exactly what services are provided, we understand it to be one individual company.
We are then left with one last category: generic marks. In fact, it is a misnomer to even say a trademark is generic, since generic words can never function as a trademark. No matter how long or extensive the use of the word has been used in connection with a good or service, a generic word will never function as a trademark or be eligible for registration on the USPTO trademark registry. For a word to be generic in the context of the goods and services provided, it must describe the genus of the product. The example above, “BEER COMPANY” provides the exact thing that the company is: a beer company. The word is synonymous with the good or service it provides.
Is the CRAFT BEER ATTORNEY Generic and/or Descriptive?
Trademark law does not allow protection for marks that are descriptive of goods and services because one company cannot have a monopoly over words that are needed to describe what a company sells. Each of the 14 law firms participating in the dispute against Ms. Moon’s trademark application uses the term “CRAFT BEER ATTORNEY” to describe the types of services it provides its clients. From their point of view, this trademark simply describes the type of legal services it provides. Said another way, a consumer would immediately and directly understand the services Ms. Moon provides upon encountering the trademark.
The author certainly can see the merits to the argument that the “CRAFT BEER ATTORNEY” trademark is merely descriptive of the services listed in the trademark application. However, it is less clear how the name “CRAFT BEER ATTORNEY” is generic. It is generally difficult to prove something is “generic,” though not impossible. It will be interesting to see if and how Ms. Moon responds to the allegations in the opposition proceedings, and what arguments she will put forth that the trademark is not generic or descriptive.
We’ve previously written about descriptive trademarks and why companies should steer clear of these marks. This is true even if a trademark owner can provide enough evidence to convince the USPTO its trademark has acquired distinctiveness. We can add fighting off 14 law firms to the long list of reasons against adopting a descriptive trademark.