9th Cir. Model Jury Instr. (Civil) 15.10

Strength as a Likelihood of Confusion Factor

In deciding whether there is infringement, an important factor is how strong and well-known a trademark is. [See Instruction insert number of instruction regarding Sleekcraft Test, e.g., 15.18 for determining whether the trademark used by the defendant creates for consumers a likelihood of confusion with the plaintiff’s trademark].]

The plaintiff [name] asserts [insert claimed trademark] is a valid and protectable trademark for its [insert goods used in connection with the trademark]. [The plaintiff [name] contends that the defendant [name]’s use of [those] [similar] words in connection with the defendant’s [insert the defendant’s product or service or business] [[infringes plaintiff [name]’s trademark] [and] [is likely to cause confusion about the [origin of goods] [business] associated with that trademark.]] To determine if the plaintiff [name] has met its burden of showing that [insert claimed trademark] is a valid trademark, you should classify it on the spectrum of trademark distinctiveness that I will explain in this instruction.

[An inherently distinctive trademark is a word, symbol or device, or combination of them, which intrinsically identifies a particular source of a good in the market. The law assumes that an inherently distinctive trademark is one that almost automatically tells a consumer that it refers to a brand or a source for a product, and that consumers will be predisposed to equate the trademark with the source of a product.]

Spectrum of Marks

Trademark law provides [great] protection to distinctive or strong trademarks. Conversely, trademarks that are not as distinctive or strong are called “weak” trademarks and receive less protection from infringing uses. Trademarks that are not distinctive are not entitled to any trademark protection. To decide trademark protectability, you must consider whether a trademark is inherently distinctive. Trademarks are grouped into five categories according to their relative [strength] [distinctiveness]. These five categories are, in order of strength or distinctiveness: arbitrary (which is inherently distinctive), fanciful (also inherently distinctive), suggestive (also inherently distinctive), descriptive (which is protected only if it acquires in consumers’ minds a “secondary meaning” which I explain in Instruction [insert number of instruction regarding secondary meaning, e.g., 15.11], and generic names (which are entitled to no protection).

Arbitrary Trademarks. The first category of trademarks is arbitrary trademarks. They are considered strong marks and are clearly protectable. They involve the arbitrary use of a word to designate the source of a product. Such a trademark is a word that in no way describes or has any relevance to the particular product it is meant to identify. It may be a common word used in an unfamiliar way.

For instance, the common word “apple” became a strong and inherently distinctive trademark when used by a company to identify the personal computers that company sold. The company’s use of the word “apple” was arbitrary because “apple” did not describe and was not related to what the computer was, its components, ingredients, quality, or characteristics. “Apple” was being used in an arbitrary way to designate for consumers that the computer comes from a particular manufacturer or source.

Fanciful (or Coined) Trademarks. The next category is fanciful (or coined) trademarks.

These trademarks are also inherently distinctive and have the same level of strength as arbitrary marks. They are therefore automatically protectable. Fanciful trademarks involve the use of a fanciful or fictitious word to designate the source of a product. Such a trademark is a word that in no way describes or has any relevance to the particular product it is meant to identify. It is a newly created (coined) word, which is used solely as a trademark. For instance, the fanciful trademark “Google” is a strong and inherently distinctive trademark, identifying a prominent technology company. “Google” is a coined word that had no meaning or application prior to its use as the name of this company.

Suggestive Trademarks. The third category is suggestive trademarks. These trademarks are inherently distinctive but are considered weaker than arbitrary and fanciful trademarks. Unlike arbitrary trademarks, [which are in no way related to what the product is or its components, quality, or characteristics,] suggestive trademarks imply some characteristic or quality of the product to which they are attached. If the consumer must use imagination or any type of multi-stage reasoning to understand the trademark’s significance, then the trademark does not describe the product’s features, but merely suggests them.

A suggestive use of a word involves consumers associating the qualities the word suggests to the product to which the word is attached. For example, when “apple” is used not to indicate a certain company’s computers, but rather “Apple–A–Day” Vitamins, it is being used as a suggestive trademark. “Apple” does not describe what the vitamins are. However, consumers may come to associate the healthfulness of “an apple a day keeping the doctor away” with the supposed benefits of taking “Apple–A–Day” Vitamins.

Descriptive Trademarks. The fourth category is descriptive trademarks. These trademarks directly identify or describe some aspect, characteristic, or quality of the product to which they are affixed in a straightforward way that requires no exercise of imagination to be understood.

For instance, the word “apple” is descriptive when used in the trademark “CranApple” to designate a cranberry-apple juice. It directly describes ingredients of the juice. Other common types of descriptive trademarks identify where a product comes from, or the name of the person who makes or sells the product. Thus, the words “Apple Valley Juice” affixed to cider from the California town of Apple Valley is a descriptive trademark because it geographically describes where the cider comes from. Similarly, a descriptive trademark can be the personal name of the person who makes or sells the product. So, if a farmer in Apple Valley, Judy Brown, sold her cider under the label “Judy’s Juice” (rather than “Apple Valley Juice”) she is making a descriptive use of her personal name to indicate and describe who produced the apple cider [and she is using her first name as a descriptive trademark.]

Generic Names. The fifth and final category is entitled to no protection at all. They are called generic terms and are the names of a product, as opposed to a term that designates the source of a product. Generic names are part of our common language that we need to identify all such similar products. A generic name is a name for the product on which it appears.

If the primary significance of the alleged mark is to name the type of product rather than the manufacturer, the term is a generic name and cannot be a valid trademark. If the majority of [relevant] consumers would understand the term to name the type of product rather than the manufacturer, the primary significance of the term is generic and not entitled to protection as a trademark.

The word “apple” can be used as a generic name and not be entitled to any trademark protection. This occurs when the word is used to identify the fruit from an apple tree.

The computer maker who uses the word “apple” as a trademark to identify its personal computer, or the vitamin maker who uses that word as a trademark on vitamins, has no claim for trademark infringement against the grocer who used that same word to indicate the fruit sold in a store. As used by the grocer, the word is generic and does not indicate any particular source of the product. As applied to the fruit, “apple” is simply a commonly used name for what is being sold.

Mark Distinctiveness and Validity

If you decide that [insert the plaintiff’s claimed trademark] is arbitrary or suggestive, it is considered inherently distinctive. An inherently distinctive trademark is valid and protectable.

On the other hand, if you determine that [insert the plaintiff’s claimed trademark] is generic, it cannot be distinctive and therefore is not valid nor protectable. You must render a verdict for the defendant [name] on the charge of infringement in Instruction [insert number of instruction regarding Trademark Elements and Burden of Proof, e.g., 15.6].

If you decide that [insert the plaintiff’s claimed trademark] is descriptive, you will not know if the trademark is valid or invalid until you consider whether it has gained distinctiveness by the acquisition of secondary meaning, which I explain in Instruction [insert number of instruction regarding secondary meaning, e.g., 15.11].