Many business owners want a mark that explains what a service or product is but that still can be protected. Suggestive marks can be helpful from a business perspective. They usually make a strong impression of what the products or services might be, which can cut down on explaining the product in marketing or advertising materials. It may take more time and more exposure for the public to build up an association between a fanciful or arbitrary mark and the goods or services.
Suggestive marks hint at the nature or some aspect of the goods, without clearly describing them. Like fanciful marks and arbitrary marks, a suggestive trademark or service mark is considered inherently distinctive. Suggestive marks receive moderately strong legal protection. Since the mark is “suggestive,” a consumer can more easily connect the product or service to the mark.
This category of mark can be more confusing and complex from a legal perspective than a fanciful mark, and it can be difficult to think up an appropriately suggestive, rather than descriptive, mark. Suggestive marks can be misconstrued as descriptive marks, which do not receive trademark protection unless the mark has acquired a secondary meaning. This means that, although the protection for suggestive marks is strong, it can be more expensive or difficult to obtain this type of protection or to defend an infringement suit related to it.
What is the Difference Between a Suggestive and Descriptive Mark?
A suggestive mark is different from a descriptive mark because the consumer or member of the public must exercise his or her imagination, or thought or perception, to draw a conclusion about what kinds of goods or services are being offered. A descriptive mark, on the other hand, immediately states something about the product or service to which it is attached.
For example, “Coppertone” suggests the outcome of using suntan oil. However “Tanning Oil” is a clear description that does not require any effort on the part of the listener to make the connection to suntan oil. Another example is “Bug Mist,” which has been found to be a descriptive mark.
In general, the words of the suggestive mark you choose should not appear in the description of the goods or services to which they are attached. The court is not likely to find this is suggestive only because you use an unconventional spelling. For example, “Tann Oyl” is still descriptive. You should also be aware of what your competitors are using as their marks. If they are using a suggestive mark, you do not want to use a variation on that suggestive mark, since this is likely to cause confusion.
Defending a Trademark Infringement Suit Based on a Suggestive Mark
If you receive a cease and desist letter in connection with a suggestive trademark claiming you have infringed the sender’s mark, you will first want to determine whether your or the sender of the letter is the senior user. If the person who sent you the cease and desist letter is the senior user, and you are the junior user of a suggestive mark, you should look at what are called the “Polaroid factors” to decide if there is a likelihood of confusion between your mark and a competitor’s mark. The court will look at the totality of the Polaroid factors to determine whether your use of the mark is likely to cause confusion.
The Polaroid factors include the strength of whichever mark is senior, the similarity between the marks, the similarity between the products or services that are being offered, the likelihood that the user that is senior will expand into your product or services area, your intent in using the mark, evidence of consumer confusion, the sophistication of consumers, and the quality of the junior mark user’s products or services.