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A New Test for Trademark Suggestiveness

Posted in Mixed Bag of Nuts

Let’s call it the Family Feud test of trademark suggestiveness . . . .

We’ve written a lot here about the all-important Spectrum of Distinctiveness, a key tool for those who name products and services, and for those who hope their selected names can be ownable as trademarks, upon their first use in commerce.

Last week, despite the clue I imbedded in my post about trademark suggestiveness (“so easy to write, I’ll probably do them while I sleep“), no one was able to connect the federally-registered floating feather image with the ZzzQuil nighttime sleep-aid brand, but there were lots of creative guesses.

What if I had asked the question in classic Family Feud style?: “Name something you associate with a good night’s sleep” — a message ZzzQuil no doubt would like to communicate about P&G’s sleep-aid product to potential consumers.

Based on my recollection of how the Feud is played, metaphors for a restful sleep would likely score well in the survey results, but a response like “sleep” (generic or descriptive of of the goods) would be ridiculed and lead to humiliation, as would any responses falling within the coined (making a word up a new word) or arbitrary (using a known word or image that has no relationship at all to a good night’s sleep) categories.

I’m thinking answers like (1) the moon, (2) stars, (3) clouds, (4) pillows, (5) sheep, and (6) Zzzzs, might score well. I’m not sure “feather” would have scored well, yet the floating feather image is a powerfully suggestive trademark for a sleep aid, it seems to me, one step removed from a goose-down pillow and the restful image of something easily floating in the air (perhaps, following a “pillow fight”).

Keep in mind that even within the suggestive category of the Spectrum of Distinctiveness, there is a range, or a spectrum within a spectrum — those candidates bordering the descriptive category are considered “highly suggestive” and are somewhat inherently weaker as trademarks than those suggestive marks bordering the arbitrary category (both ends of the spectrum within the suggestiveness spectrum, of course, are inherently distinctive and ownable as a trademark from day one upon first use). So, the more thought and imagination required to make the connection between the name or image and the goods or services, the closer the suggestive mark will be to the even stronger arbitrary category.

For this particular example, I’m thinking that sleep-aid brands that contain the ZZZ metaphor are highly suggestive, as evidenced by the many others who include that element in products associated with sleep: (1) ZZZ-EEES with 5 Sheep for an over-the-counter sleep aid (shown below); (2) ZZZ CHAIR for a sleeper love seat; (3) IT’S ALL ABOUT THE ZZZ’S for a mattress retailer; (4) HEALTHYZZZ for pillows; (5) INSOMNOMORE ZZZ with Sheep for medical services for the treatment of insomnia; (6) ZZZTIME for infant blankets; and (7) ZZZ for a herbal sleep-aid.

Perhaps the seventh example of those third-party marks playing on the highly suggestive nature of ZZZ for sleep-related products would provide a basis for seeking a narrower trademark claim and not pursuing registration of ZZZQUIL standing alone, but that would be too conservative for P&G, perhaps because of the substantial equity in the well-recognized NYQUIL brand that ZZZQUIL clearly leverages. It also has sought protection for ZZZQUIL in combination with the VICKS house brand and associated trade dress elements (including the floating feather).  Interestingly, Notices of Allowance recently issued to P&G on these additional ZZZ-formative intent-to-use marks for ZZZSLEEP and ZZZTIME, both for pharmaceutical sleep aids. In April, yet another ZZZQUIL intent-to-use application was filed by P&G for goods in Int’l Classes 3, 8, and 11. Do we have a family of ZZZ marks in the making?

Linking the ZZZ prefix to QUIL is far more unique than linking it to SLEEP and TIME, it seems to me. Hmmm, isn’t a QUILL a feather, and does that help explain the feather image? Lots to consider here.

Turning our attention briefly to another heavily advertised (prescription) sleep-aid, I’m thinking that a floating green butterfly would not score well under the Family Feud test of suggestiveness, but would it be ridiculed as arbitrary, at least before the Lunesta brand came along?

In other words, if the butterfly were to land, would it do so on the suggestive or arbitrary side of the line within the Trademark Spectrum of Distinctiveness?

Last question, how many times have you yawned while reading this post, assuming you’ve gotten to the end?