What Is A Laudatory Trademark?
A laudatory trademark is a type of mark that gives praise or conveys approval. It is a term that “describes the alleged merit of a product or service,” according to the U.S. Trademark Manual of Examining Procedure (TMEP). Words such as “best,” “superior,” “ultimate,” and “perfect” might be included in a laudatory trademark.
A primary issue with laudatory trademarks, as discussed in the TMEP, is that they are often considered descriptive, and therefore unregistrable on the Principal Register unless they’ve acquired distinctiveness under Section 2(f) of the Trademark Act. The term is considered merely descriptive if it immediately conveys information about an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services.
Trademark Registration of Laudatory Trademarks
When a laudatory term (or terms) is combined with arbitrary, fanciful, or suggestive terms in a trademark application, the examining attorney at the United States Patent and Trademark Office (USPTO) will examine the trademark as a whole. The key question in this context is whether the trademark, taken as a whole, is distinctive and able to function as a unique source identifier in the mind of the consuming public.
Here’s a brief overview based on the principles the USPTO examining attorney will apply to laudatory terms combined with other trademarkable terms:
Examination of the Whole Trademark: The primary focus is on the impression created by the mark as a whole, rather than dissecting it into its component parts. However, if the laudatory term is merely descriptive of the goods or services, even when combined with other terms, the entire mark might still be deemed descriptive.
Fanciful, Arbitrary, or Suggestive Terms: If the laudatory term is combined with fanciful, arbitrary, or suggestive terms, it can lend the overall mark a degree of distinctiveness. Fanciful marks are invented words with no dictionary or other known meaning; arbitrary marks are real words that have no relation to the goods or services being provided; and suggestive marks require some imagination, thought, or perception to reach a conclusion as to the nature of the goods or services. These terms can often help tip the scales towards distinctiveness.
Registration on the Principal Register: If the combination of the laudatory term and the other term(s) creates a mark that is distinctive and capable of functioning as a unique source identifier, the USPTO may allow the mark to be registered on the Principal Register without needing to prove acquired distinctiveness.
When a laudatory term is combined with other descriptive or generic terms in a trademark application, the USPTO will consider whether the mark as a whole is distinctive or if it merely describes the goods or services, or their attributes.
Here’s a brief overview based on the principles the USPTO examining attorney will apply to laudatory terms combined with other descriptive or generic terms:
Examination of the Whole Trademark: The USPTO examines the mark as a whole. If the combined laudatory, descriptive, or generic terms merely describe the attributes, characteristics, or features of the goods or services, then the mark may be considered merely descriptive and not inherently distinctive.
Merely Descriptive Marks: If the mark is considered merely descriptive, it cannot be registered on the Principal Register without a showing of acquired distinctiveness under Section 2(f) of the Trademark Act. This means that the mark must have been used in commerce for a sufficient period of time that it has become distinctive of the applicant’s goods or services.
Generic Terms: If the laudatory term is combined with generic terms, the mark may be considered generic, and thus ineligible for trademark protection entirely. Generic terms are the common names of goods or services and they cannot be registered as trademarks, even with a showing of acquired distinctiveness.
Evidence of Acquired Distinctiveness: If the applicant can prove that their mark has acquired distinctiveness through continuous use in commerce for at least five years, substantial sales and advertising, or customer recognition, it may be possible to register the mark on the Principal Register.
Can Laudatory Terms combined with Arbitrary, Fanciful, or Suggestive Terms Be Registered With the USPTO?
The key to registering a mark on the Principal Register of the United States Patent and Trademark Office (USPTO) is the mark’s distinctiveness. The mark needs to be able to uniquely identify the source of the goods or services.
Arbitrary, fanciful, and suggestive terms are, by nature, more distinctive than descriptive or generic terms:
Fanciful Marks: These are invented words with no dictionary or other known meaning (e.g., “Kodak” for cameras). They are inherently distinctive and have the strongest chance of being registered because they are the most capable of serving as unique source identifiers.
Arbitrary Marks: These are real words that have no connection or relevance to the goods or services being provided (e.g., “Apple” for computers). Like fanciful marks, arbitrary marks are inherently distinctive and readily registrable.
Suggestive Marks: These marks require some imagination, thought, or perception to understand the connection to the goods or services (e.g., “Microsoft” for software for microcomputers). Suggestive marks are also inherently distinctive, but less so than arbitrary or fanciful marks.
When a laudatory term, which could be considered descriptive, is combined with arbitrary, fanciful, or suggestive terms, the distinctiveness of the latter can help ensure that the trademark as a whole is seen as unique and not merely descriptive. This combination can create a stronger, more distinctive trademark that is more likely to be successfully registered on the Principal Register.
However, remember that each case is judged on its own merits, and the outcome can depend on many factors, including the views of the examining attorney at the USPTO. For the most accurate and current advice, always consult with on of our trademarks attorneys about your trademark registration matter.
Do You Need Trademark Registration Assistance?
Protecting your brand is crucial in today’s competitive business environment. Your trademarks are more than just symbols or words; they represent your reputation, your quality, and your commitment to your customers. Ensuring these trademarks are secure and effectively managed is a complex process that requires specialized legal expertise.
Our team of experienced attorneys understands the intricacies of trademark law and is equipped to guide you through every step of the trademark process. From assessing the registrability of a trademark, filing an application with the USPTO, to enforcing your rights against infringers, we are prepared to provide comprehensive legal support tailored to your business needs.
But our services don’t stop at securing your trademarks. We believe in a proactive approach to intellectual property management. We offer ongoing monitoring services to help safeguard your brand from potential infringements and keep you informed of relevant developments in the marketplace.
Whether you’re a start-up looking to establish your first trademark or an established business dealing with complex trademark matters, our attorneys are committed to protecting your brand and supporting your business growth.
We encourage you to reach out to us today. Let’s discuss how we can help secure your business’s most valuable asset – your brand. Your trademark matters to us because your business matters to us. Trust us with your trademark needs, and together, we can build a stronger brand for your business.