by Traverse Legal, reviewed by Enrico Schaefer - November 8, 2011 - What is a Trademark or Service Mark?
Welcome to Trademark Law Radio, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration.
This is Brian Hall, a trademark attorney with Traverse Legal, PLC, a law firm specializing in representation of trademark owners throughout the world. Today, we will be answering the question: What is a suggestive trademark?
In the past, I have spoken about descriptive trademarks, as well as generic trademarks. However, today, I want to focus on suggestive trademarks which are inherently distinctive and warrant protection as trademarks.
A suggestive trademark, simply put, indirectly alludes to a quality of the goods or services that the mark has used in connection with. While there is a fine line between a descriptive trademark and suggestive trademark, suggestive trademarks should be preferred because they entitle the owner of the trademark two exclusive rights.
Some examples of suggestive trademarks include Playboy for the men’s magazine, 7-Eleven, for the store that is open from 7 am to 11 pm selling various items, and such car names as Jaquar and Mustang. The reason those marks are suggestive rather than descriptive is because it requires an additional leap in the minds of consumers when determining what the goods or services might be underlying that particular mark.
While it is not an easy determination to make, between a descriptive and suggestive trademark, it is one that is critical. Whether you are a trademark attorney looking to advise your clients as to whether or not a mark is suggestive or whether you are a trademark owner and brand owner looking to identify your goods or services with a protectable mark, or whether you’re an examining attorney at the United States Patent and Trademark Office making an initial determination as to whether o r not an application qualifies for federal registration, you need to know the difference between a descriptive and a suggestive mark.
The best place to go in order to understand what the distinction is is case law. Cases have been decided that most trademark attorneys can go look at to help give an indication as to whether or not something will be deemed a suggestive trademark. For example, the owners of the Coppertone trademark as used in connection with suntan oil, likely sought trademark counsel before proceeding with that mark. Had that mark been deemed descriptive, they would not be entitled to exclusive rights for use of that mark in connection with their sun tanning products. However, since it was deemed suggestive, it is what’s known as an inherently distinctive mark and one that they can claim exclusive rights to.
So, I cannot emphasize enough the importance of identifying whether or not your mark will be deemed as descriptive or suggestive. You goal should be a suggestive trademark.
Once again, I’m Brian Hall, and I hope I helped answer your question of what is a suggestive trademark.
You’ve been listening to Trademark Law Radio. Whether you are facing a trademark infringement, licensing, monitoring or trademark registration issue, we have a trademark attorney ready to answer your questions.
As a founding partner of Traverse Legal, PLC, he has more than thirty years of experience as an attorney for both established companies and emerging start-ups. His extensive experience includes navigating technology law matters and complex litigation throughout the United States.
This page has been written, edited, and reviewed by a team of legal writers following our comprehensive editorial guidelines. This page was approved by attorney Enrico Schaefer, who has more than 20 years of legal experience as a practicing Business, IP, and Technology Law litigation attorney.
