–Dan Kelly, Attorney
I recently came across a catalog for a company that sells “modular floorcovering” — probably better known as “carpet squares.” (They actually sell more than squares, but I digress.) The brand? FLOR. FLOR? Cue kneejerk trademark attorney reaction: “FLOR? Are you kidding me? I bet they had a heckuva time getting that registered!” Well, they didn’t, but it served as a good reminder to me to be wary of my “Dr. No” tendencies.
I am about to make a sweeping generalization here, but it seems to me that one of the real or perceived gulfs between marketing and legal types is the former’s occasional attraction to words with novel spellings and the latter’s repulsion to those same words, at least when applied to goods or services that the word might describe. Conventional trademark wisdom is that a novel spelling of a word will not save it from being “merely descriptive” of the goods or services with which it is used if purchasers would perceive it as merely descriptive of the goods or services. Why is this important? Well, “merely descriptive” words are not immediately entitled to trademark protection. The owner of such words has to use them as a trademark so that they acquire “distinctiveness” or “secondary meaning,” and this process can take five or more years. In contrast, suggestive words are entitled to immediate trademark protection–they are “inherently distinctive” as trademarks. (See here for a cheat sheet and overview of these concepts.)
When Interface Global applied to register FLOR as a trademark for use in connection with “modular carpeting and rugs,” it was required to show that FLOR had acquired distinctiveness. In other words, it had to show that when consumers see “FLOR,” they actually think of the company that sells modular floorcovering, not just another way to say “floor.” Same thing happened when the original owner of PUR tried to register it for “water filtration units.” Generally, if a company uses a word like this as a mark for five years, exclusively and continuously, that claim alone is generally sufficient to show acquired distinctiveness.
In the final analysis, novel spellings can be catchy and marketable, but if they are also descriptive, it could take a while to build up strong trademark rights in them.
For more information, see Steve’s recent post on “moist” cake mixes, which gives a good overview of some suggestive trademarks and links to other posts that touch on the line between descriptiveness and suggestiveness.