–Dan Kelly, Attorney
As evidenced on these very pages over the past year or so, there does seem to be a general divide between legal types and marketing types about the desirability of descriptive trademarks and brands. This is understandable. There is a direct tension here. More descriptive marks and brands carry more information to a consumer and tend to be easier to market, but more difficult to protect. Conversely, less descriptive marks and brands convey less information and require more explaining, but they are easier to protect legally. For a new product or company, the trade off may amount to whether the company wants to spend its dollars in the marketing department or the legal department, because a savings in one place may well have a corresponding cost in the other.
One product market that seems to gravitate towards descriptive brands is the barbecue grill market. As grilling season is upon us, one recent retail flyer advertised a full page of grills. The brands? AUSSIE, CHAR-BROIL, CHAR-GRILLER, GRILLPRO, SUREFIRE, and BIG STEEL KEG. A little online shopping yields others: WEBER, BRINKMANN, UNIFLAME, GRILLMASTER, BBQ GRILLWARE, BROIL KING, and BIG GREEN EGG.
By way of refresher, a trademark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the goods. In contrast, a trademark is suggestive if it requires imagination, thought, or perception to reach a conclusion as to the nature of the goods.
Here’s my stab, admittedly subjective, of ranking the above brands from most distinctive to least distinctive on the spectrum of distinctiveness, with some comments and annotations:
- AUSSIE (Arguably arbitrary–suggestive insofar as Australia is associated with “barbies.”)
- WEBER (Arbitrary for grills–it is a surname and therefore had a hurdle to registration.)
- BRINKMANN (Ditto.)
- SUREFIRE (A possible double entendre–usually considered suggestive.)
- UNIFLAME (Was not refused by the US Trademark Office for descriptiveness.)
- GRILLPRO (Ditto.)
- GRILLMASTER (Ditto.)
- BROIL KING (Ditto–“BROIL” disclaimed.)
- CHAR-BROIL (Registered–admitted descriptive, but has acquired distinctiveness.)
- CHAR-GRILLER (Amazingly was not refused for descriptiveness.)
- BIG GREEN EGG (Ditto. The applicant admitted that the grill is big, green in color, and in the shape of an egg.)
- BIG STEEL KEG (Currently refused as descriptive. The examiner observed, “Applicant’s barbecues and grills are in the form of a keg and are big and made of steel.” I could also see this application being opposed by the Big Green Egg folks.)
- BBQ GRILLWARE (Registered in stylized form with the words “BBQ GRILLWARE” disclaimed, essentially admitting that they are descriptive for grills.)
Despite the histories of some of these trademarks in the registration process, I would be inclined to draw a line in this list between SUREFIRE and UNIFLAME. The four trademarks above the line being definitely suggestive or arbitrary, the rest potentially descriptive. I freely admit room for argument here–the Trademark Office’s line for “merely descriptive” falls roughly between BROIL KING and CHAR-BROIL, though not perfectly. This is a useful exercise to see, too, that marks falling into the “suggestive” category, while immediately protectable and registrable, are not necessarily strong, as I would argue that GRILLPRO and GRILLMASTER are fairly weak, although I can see the argument that they are suggestive and not merely descriptive.
Of course, getting a descriptive or weak suggestive mark registered is just the start. Once registered, a trademark, especially a weak trademark, must be defended, lest it shrivel up and die. Could any of the owners of these marks do anything to stop the market entry of, say, CHARPRO Brand grills? (Incidentally, a name I just made up, only to find an application for it pending at the Trademark Office–honor bright!) How about a brand called CHARCO GRILL?
Taking the positive approach, which of these represent strong brands? I mean, “household name” kind of strong? I’ll put my money on WEBER — and that’s about it. CHAR-BROIL has a long history, which is possibly its only saving grace, and BIG GREEN EGG, despite accurately describing its own goods, is somewhat arbitrary as applied generally to grills and unique enough that it just may have staying power. AUSSIE and BRINKMANN have potential strength, too. The rest, I fear, may go up in smoke!