We all know and love many popular TURKEY trademarks… like WILD TURKEY and TURKEY HILL… and notice that these TURKEY marks are used on products that have nothing to do with turkeys. For example:
- WILD TURKEY is trademarked for whiskey, distilled spirits, and liqueur
- TURKEY HILL is trademarked for ice cream cones and other frozen confections
By comparison, popular trademarks that are used to sell turkeys don’t use the word ‘turkey’ in their mark. For example: BUTTERBALL, HONEYSUCKLE WHITE… and my personal favorite CAJUN GROCER (that sells delicious turducken – http://www.cajungrocer.com).
THE SECRET? Words that describe the goods and services that they sell are descriptive and are weak trademarks. In fact, it can be difficult and sometimes impossible to register a descriptive mark with the USPTO for trademark protection. (There is a sliding scale for measuring descriptiveness. Some terms are more descriptive than others. This example of trademarking the word TURKEY (as a brand for turkey products) is a highly descriptive use of the word that overlaps with it’s dictionary definition). The reason behind blocking trademark registration for descriptive terms is logical. Since trademark registration grants exclusive use to the owner… and dictionary words are free for us all to use…. USPTO trademarks are not registered for descriptive terms because this would block words from being used in commerce (by competitors) to describe common goods and services.
Back to the trademarks listed above, the popular WILD TURKEY trademark has a fairly strong monopoly on using the word TURKEY to sell whisky and other alcohol products. Similarly, TURKEY HILL is a popular trademark with a fairly strong monopoly on using the word TURKEY to sell ice cream.
When creating brands for your business and registering trademarks… remember not to run a-fowl of trademark descriptiveness. Enjoy your Thanksgiving!
See also www.uspto.gov; @iplegalfreebies and www.kasterlegal.com.
BY: Vanessa Kaster, Esq., LL.M.