Duhaime's Law Dictionary


Suggestive Mark Definition:

A trademark which does not describe the product but instead suggests it, requiring some imagination to connect with the nature of the product.

Related Terms: Trademark

A species of trademark which is not generally descriptive but is distinctive, and which evokes one or more characteristics of the product through the use of imagination.

In the case law on intellectual property, there are several helpful descriptions.

In 2007, an excellent summary of the law and a comparative description was published in Welding Services v Forman, Justice Gibson authoring the opinion for the United States Court of Appeals, 11th Circuit:

"Trademark ... protection is only available to distinctive marks, that is, marks that serve the purpose of identifying the source of the goods or services.

"Some marks are inherently distinctive; some marks, though not inherently distinctive, acquire distinctiveness by becoming associated in the minds of the public with the products or services offered by the proprietor of the mark; and some marks can never become distinctive.

"Distinctiveness is a question of fact, whether the question is inherent distinctiveness or acquired distinctiveness.

"Trademark law distinguishes four gradations of distinctiveness of marks, in descending order of strength: fanciful or arbitrary, suggestive, descriptive, and generic.

"An arbitrary or fanciful mark bears no logical relationship to the product or service it is used to represent.

"A suggestive mark refers to some characteristic of the goods, but requires a leap of the imagination to get from the mark to the product (eg. penguin for refrigerators).

A descriptive mark identifies a characteristic or quality of the service or product (geg. Vision Center for eyeglasses store)."

In the 2003 case of 24 Hour Fitness USA v 24/7 Tribeca Fitness, Justice Swain of the United States District Court (New York) wrote:

"There is no contention here that Plaintiff's mark is generic (entitled to the least protection) or arbitrary and fanciful (having the highest level of inherent distinctiveness). In determining where ... Plaintiff's mark lies, the Court will accordingly consider whether the mark is descriptive or suggestive. A descriptive mark tells something about a product, its qualities, ingredients or characteristics, while a suggestive mark is one that suggests the product, though it may take imagination to grasp the nature of the product.

"If the mark is suggestive, it is inherently distinctive.

"A descriptive mark may be protected only if it has acquired secondary meaning; a suggestive mark, on the other hand, is protected without a showing of secondary meaning."

A good example of a suggestive mark was given  in Thane v Trek Bicycle. Trek Bicycles had long used the trademark TREK. When upstart Thane began to use the trademark Orbitrek on its stationary bikes, Trek sued, resulting in these words of Justice Berzon of the United States Court of Appeals:

"TREK is a suggestive mark because trek means a long journey, and one can undertake a long journey on a bicycle. As a suggestive mark, TREK has more distinctiveness than a merely descriptive mark and deserves some trademark protection. However, it does not belong to the highest category of distinctiveness, that reserved for arbitrary and fanciful marks, and thus does not deserve as much protection. Because famousness is such a hard standard to achieve, the fact that TREK does not belong to this highest category of distinctiveness indicates — although it does not compel the conclusion — that TREK is not famous."

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