9th Cir. Model Jury Instr. (Civil) 15.19

As I have instructed you, one factor to consider in determining whether the trademark used by the defendant [name] is likely to cause confusion with the plaintiff [name]’s mark is the strength of the plaintiff [name]’s mark. The strength of the trademark is determined by its distinctiveness and recognition in the marketplace. How strongly the plaintiff [name]’s trademark indicates that the goods or services come from a particular source is an important factor to consider in determining whether the trademark used by the defendant [name] is likely to cause confusion with the plaintiff [name]’s mark.

The Strength of Marks

The strength of a trademark is determined by its distinctiveness and recognition in the marketplace. The stronger a mark is, the greater the scope of protection the law provides. Measuring the strength of a trademark requires two steps.

First, consider its conceptual strength. This is where the mark is placed on the spectrum of distinctiveness of marks.

Second, consider the trademark’s commercial strength. This is how much marketplace recognition the mark has.

Conceptual Strength: What is “conceptual strength?” All trademarks are grouped into two categories: either inherently distinctive or not inherently distinctive. If a mark is inherently distinctive it is immediately protected when first used. If it is not inherently distinctive, to become a legally protected mark, a designation must acquire distinctiveness in consumers’ minds by becoming known as an indication of source of goods or services. The law calls this “secondary meaning.” [See Instruction 15.11 (Infringement—Elements—Validity—Distinctiveness—Secondary Meaning). If the plaintiff’s mark is determined to be inherently distinctive, there will be no need to instruct the jury on acquiring a secondary meaning for the mark.]

For determining the conceptual strength of a mark, trademarks are grouped on a spectrum according to the nature of the mark. In the spectrum, there are three categories of word marks

that the law regards as being inherently distinctive: arbitrary, fanciful (or coined), and suggestive. Descriptive word marks are regarded as not being inherently distinctive and require a secondary meaning to become a valid trademark. Finally, generic names have no conceptual strength.

Arbitrary marks are words that in no way describe or suggest the nature of the goods or services with which they are used. For example, “apple” is a common word, but it does not describe or suggest anything about the nature of “Apple” brand computers or smart phones. It is an arbitrary word when used as a mark on those products. Arbitrary trademarks are regarded as conceptually strong marks.

Fanciful (or Coined) marks are words that are created solely to serve as trademarks. For example, “Clorox” and “Exxon” are coined marks for cleaning products and gasoline, respectively. Fanciful trademarks are regarded as conceptually strong marks and are equal to arbitrary marks in conceptual strength.

Suggestive word marks are not as conceptually strong as arbitrary or fanciful marks. Suggestive trademarks suggest some characteristic or quality of the goods or services with which they are used. If the consumer must use her imagination or think through a series of steps to understand what the trademark is telling about the product, then the trademark does not directly describe the product’s features but merely suggests them. For example, the trademark “Tail Wagger” for dog food merely suggests that your dog will like the food. As another example, when “apple” is used in the mark “Apple-A-Day” for vitamins, it is being used as a suggestive trademark. “Apple” does not describe what the vitamins are. However, it suggests the healthfulness of “an apple a day keeping the doctor away” with the supposed benefits of taking “Apple-A-Day” vitamins.

Descriptive word marks are not inherently distinctive. These marks directly describe some characteristic, or quality of the goods or services with which they are used in a straightforward way that requires no exercise of imagination. For instance, the word “apple” is descriptive when used in the trademark “Tomapple” to designate a tomato-apple juice. It directly describes one of the ingredients of the juice.

Generic Names. If the primary significance of an alleged mark is to name the type of product or service on offer, rather than to name the manufacturer or provider, the primary significance of the term is generic, and it cannot be a valid trademark. Such terms are known as generic names.

The word “apple” can be used as a generic name. This occurs when the word is used to identify the fruit of 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 a grocer who uses that same word to indicate fruit sold in its stores. 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. Generic names have no conceptual strength.

Commercial Strength: What is “commercial strength?” Not all marks are equally well known. Trademark strength is somewhat like the renown of people. Only a very few people are famous enough to be widely known and recognized around the world. Most people are known and recognized only by a small circle of family and friends.

Some trademarks have commercial strength” in the sense they are widely known and recognized. A few trademarks are in the clearly “famous” category. Examples of “famous” marks include “Apple” for computers and smart phones, “Google” for a search engine, “Coca-Cola” for beverages, and “Toyota” for vehicles. Some trademarks have commercial strength only in a certain market niche such as mountain climbing gear, plumbing supplies, or commercial airplane electronics equipment, but relatively weak outside that field. Actual marketplace recognition, which includes advertising expenditures and number of sales, determines how well known a trademark is.

Commercial strength can transform a mark that is not conceptually strong into a strong mark.