EGGNOG. Is it Generic?
Introduction
The holidays are here and I cannot think of a better way to celebrate than with a blog post about eggnog. If you have a trademark and need to protect or enforce it—or maybe you are thinking about adopting a new trademark—it is important to consider the conceptual strength of the trademark. Doing so will impact your ability to protect and enforce the mark. For example, if you are interested in the trademark EGGNOG, that term could be generic for some goods, but it could be a great trademark when used in connection with others.
Trademark Distinctiveness Continuum
Trademarks fall into one of five categories on the trademark distinctiveness continuum. On one end of the spectrum, there are generic terms. On the other end of the spectrum, there are fanciful trademarks. There are three additional categories: arbitrary marks; suggestive marks; and descriptive marks.
Inherently Distinctive Trademarks
Fanciful marks are a type of trademark that are entirely invented or “coined” for the sole purpose of functioning as a trademark. This category of marks consists of words or logos that have no intrinsic or dictionary meaning before their adoption as trademarks. Examples include made-up words like “Kodak” for photographic products. The key characteristic of fanciful marks is that they are inherently distinctive and unique, making them immediately identifiable in the marketplace and offering a high level of brand protection. Due to their distinctive nature, fanciful marks are generally afforded the strongest level of trademark protection under intellectual property law. Their originality means that they are unlikely to be confused with existing marks, and their lack of prior meaning ensures that they are closely associated with the product or service they represent, thereby building a strong brand identity.
Because “eggnog” is an existing word, it probably would not fall within the fanciful category of trademarks. However, let’s assume that you are interested in the name ZLEGNOG for water toys. Last time I checked, “Zlegnog” did not appear in the dictionary (at least the ones that I consult).
Arbitrary marks are common words or images used in a context that is unrelated to their normal meaning, rendering them distinctive to a particular product or service. Unlike fanciful marks, which are coined words with no prior meaning, arbitrary marks consist of pre-existing words or symbols applied in a way that does not logically connect to the product they represent. A classic example is “Apple” for computers and electronics; while “apple” is a common word referring to a fruit, its use in the context of technology is unexpected and unrelated, making it arbitrary as a trademark. These marks are highly protectable under trademark law because they are inherently distinctive and do not describe the product’s features, qualities, or functions. This distinctiveness allows them to serve as strong identifiers of the source of goods or services, thereby aiding in building a unique brand identity and preventing consumer confusion in the marketplace.
If you launched a series of video games about aliens from outer space and called the series EGGNOG, the mark would be arbitrary. Neither the video game nor its attributes involve eggnog the beverage. Thus, it would be an arbitrary mark.
Suggestive marks in trademark law occupy a unique position, as they hint at or suggest the nature, quality, or characteristic of the goods and services they are associated with, without explicitly describing them. These marks require a leap of imagination or thought from the consumer to connect the mark with the product or service. Unlike descriptive marks, which plainly describe a product’s attributes or functions, suggestive marks are more subtly linked to the product, allowing them to be inherently distinctive and eligible for trademark protection without the need for proving secondary meaning. An example of a suggestive mark is “Coppertone,” which suggests a product related to tanning and skin tone but does not directly describe the sunscreen. Suggestive marks are valuable in marketing as they are both memorable and provide some indication of the product or service, aiding in brand recognition and consumer engagement while still enjoying a strong level of legal protection under trademark law.
If you use the name EGGNOG in connection with a bar or restaurant built around a Christmas/Holiday motif, EGGNOG would operate as a suggestive mark. The name does not explicitly identify the services but imagination helps connect the dots.
If you need to enforce your trademark rights against an infringer, it is easier to do so with an inherently distinctive mark (i.e., fanciful, arbitrary, suggestive). First, you do not need to establish secondary meaning, as discussed below. Second, it is easier to register your mark with the USPTO, and owning a federal registration aids your enforcement efforts.
Descriptive Marks and Generic Terms
Descriptive marks refer to terms or phrases that directly describe the quality, characteristic, function, or intended purpose of a product or service. These marks are less distinctive than fanciful, arbitrary, or suggestive marks, and as such, they generally receive a lower level of trademark protection. The primary challenge with descriptive marks is that they are inherently non-distinctive, making it difficult for consumers to associate them with a specific brand or source. Examples include “Lumber Liquidators” for discount flooring products, “Cold and Creamy” for ice cream or “Rapid Print” for a printing service. For descriptive marks to gain trademark protection, they must acquire secondary meaning; that is, over time, consumers must come to recognize these marks as being associated with a particular source or brand rather than just the product itself. This secondary meaning is typically established through extensive use, advertising, and presence in the market, leading to the mark being identified uniquely with the product or service provider. In a trademark dispute, it often requires the brand owner to perform a consumer survey.
If you sell eggnog-flavored candies and label the wrappers with EGGNOG, EGGNOG will serve as a descriptive mark because it describes a characteristic of the product (i.e., the eggnog flavor).
Generic terms refer to words or phrases that are the common, everyday names for products or services and therefore cannot be protected as trademarks (when used to identify those products or services). Generic terms are the opposite of distinctive marks; they refer directly to the type or class of a product or service, leaving no room for brand distinction. For example, “milk” when used to describe the dairy beverage, or “bicycle” for a two-wheeled vehicle, are generic terms. These terms are not eligible for trademark protection because they need to be freely available for all businesses to use to identify their products accurately.
A key legal concern with generic terms is “genericide,” where a once distinctive trademark becomes so widely used to describe a type of product or service that it loses its trademark protection and becomes generic. Examples include “escalator” and “thermos,” which started as brand names but became generic through common usage. The use of generic terms in trademarks is a crucial consideration for businesses, as it directly impacts the ability to legally protect and distinguish a brand in the market.
If you sell cartons of eggnog and the word “eggnog” appears prominently on the container, “Eggnog” will serve as a generic term because it identifies the product rather than the source of the product (e.g., Rich Beverage Makers of America).
The classification of trademarks along the continuum is important. It is easier to protect and enforce inherently distinctive trademarks than descriptive marks. That said, descriptive marks are at least protectable/enforceable, whereas generic marks are not. Note that the goods/services are relevant to the analysis. As illustrated above, eggnog is not necessarily generic, descriptive, suggestive or arbitrary. It can fall into any of those categories depending on the goods/services.
We encourage all brand owners—including eggnog-oriented brands—to consider their trademarks and seek professional advice. If you have trademark that use (or intend to use), you can schedule a consultation with an experienced trademark attorney here.