If I understand your post correctly, GladysOdessa, you are looking for a quick course in trademark law.
To support all of my following answers to your queries, you can visit the USPTO at
http://www.uspto.gov. The government site provides you with the trademark laws in the US.
To begin, trademarks are used to identify the source of goods or services and are used to distinguish these goods or services from all others in the marketplace. The more distinctive the trademark, the easier it is for consumers to do the distinguishing. If everyone called their goods and services ABC, consumers would be hopelessly confused as to the origin. The generating of consumer confusion caused by the same or similar trademarks being used on the same or similar products or services will form the basis of most trademark infringement suits.
All of the questions you have asked are answerable, but the answers are far more complex than what can be provided in a forum setting. What follows is brief.
What is the name of your state (only U.S. law)? Utah, but this is concerning a possible future filing with the USPTO. My questions follow: Does putting a descriptive word (adjective) in front of a generic (common descriptive word/term that is used to identify a class or genus of services) make a term not generic?
Generic words are words used to describe an entire class of goods or services and, because they can never work to distinguish the product or service from those of others, generic words can never on their own gain protection under trademark law when used in the generic way. Some examples of generic words are "computers" and "clothing" and "restaurant." Calling your computer product "Computers" will not sufficiently distinguish your computer product from other computer products and you can never prevent others from using the word computer. Everyone can use that word for computers. You could potentially, however, used the word "clothing" for your computer product. Although generic, the word clothing to identify computers becomes distinctive.
Descriptive trademarks are those marks that describe the characteristics of a product or service. Unless or until a descriptive mark gains a secondary meaning, they do not qualify for placement on the Principal Register. Some examples of descriptive words are "speedy" and "fried."
A descriptive word in front of a generic word can potentially make a trademark distinct enough to be eligible for registration on the Principal Register. Descriptive words on their own are considered weak identifiers. Marks that simply describe the goods or services generally will not work well enough as a trademark to distinguish the goods or service from others.
For examples of generic/descriptive trademarks that have become connected with a specific service and product, you have
Speedy Printing and
Kentucky Fried Chicken. Passage of time (or extensive advertising) is often required for these types of trademarks to be protectable marks. These marks have, over time, gained what is called a "secondary meaning," where consumers have come to associate the marks with the goods or services being offered.
What if that descriptive word had acquired distinctiveness and was a registered trademark on the Principal Register? What, if any difference, would a merely descriptive word vs. a word that had acquired distinctiveness make?
The difference between using a descriptive mark as an identifier and using a distinctive mark as an identifier is that the distinctive mark is eligible for registration on the Principal Register. A descriptive mark must gain consumer recognition first.
If an acquired distinctive word (registered trademark) was joined as a compound word with a generic common descriptive word, could the compound word be trademarked with a disclaimer used for the generic common descriptive word (registered trademark)?
Yes. Common words cannot be protected from use by others unless they are used in an UNcommon way. They are disclaimed. Only the combination of the words can be protected.
A way common (generic) words can gain trademark protection is to use them in an uncommon way. Penguin is not a protectable word for penguins, although it is protectable if used for books. Arrow is not a protectable word when used for arrows, although it is protectable when used for shirts.
Using again the trademark examples provided earlier: The words speedy, printing, Kentucky and fried chicken can be used by anyone. The combination of Speedy with Printing and Kentucky with Fried Chicken, however, cannot be used by others to identify a printing business or a fried chicken business, without infringing on the trademark rights of Speedy Printing and Kentucky Fried Chicken. The words penguin and arrow can be used by anyone. The words penguin and arrow cannot be used to identify books or shirts, without infringing on the trademark rights of Penguin and Arrow.
Marks like Kodak (a fanciful or created word mark for cameras) and Penguin (an arbitrary word mark for books) are considered strong marks. They work from the start to distinguish the products from all others in the marketplace.
What trademark laws or court cases can be used to support the answers to these questions? If my questions are not understandable, please let me know. Thank you. GladysOdessa
If you have a product or service that you are marketing or that you intend to market soon, and you wish to register a trademark as an identifier for your product or service, you can be smart to seek out the assistance of a trademark attorney in your area. You will, at any rate, want to do a trademark search so that the name you choose for your product/service does not conflict with anyone else's trademark.
You can conduct a search of trademarks already in use through the US trademark office. This identifies federally-registered marks. You can check state registries for state-registered marks. You can use your search engine to check for unregistered marks already in use. Or you can hire a trademark search firm. It is important to remember that, in the US, a trademark does not have to be registered for the trademark holder to have rights in the mark. Registration is not required - only the use of the mark in commerce is necessary.
I recommend that anyone starting a business seek out legal assistance. Choosing a name to identify your goods/services is one of the more important choices you will make for your business.
Good luck.
