Commoners in the Land of Trademarks

One of the British tabloids has taken Meghan Markle to task because she wants to trademark “archetypes” for use in conjunction with her Spotify podcast. The tabloid defiantly asserts archetypes is 470 years old. So? They write she should not be entitled to own this word. She is, however, entitled to grab a word from the dictionary and use it as a trademark to the exclusion, in category, of anyone else’s use.

Common words are very often selected for use as trademarks, designators of source of goods or services.  For example, Apple computers and phones, Pioneer audio equipment. Surely, these words, too, have long been in common use to describe fruit and people of hardy stock, but that matters not. Common words can and do serve as trademarks when used to designate a source.

Over 45 years ago, Judge Henry Friendly wrote an opinion in Abercrombie & Fitch Co. v. Hunt World, Inc., in which he divided trademarks into the following five categories: generic; descriptive; suggestive; arbitrary; and fanciful. His opinion is often cited today.

Generic words describe the item itself. It’s a fruit called an apple and can never serve as a trademark. Descriptive marks describe the qualities of goods, e.g., Eversharp knives, and don’t acquire trademark rights until, through prolonged use, they become associated with the source of the goods or services.

Suggestive marks require a bit of imagination, e.g,. Polar Bear coats, Airbus planes, Netflix streaming services, and Coppertone tanning cream. Suggestive, arbitrary and fanciful marks are considered inherently distinctive and do not need anything more than adoption and use to serve as trademarks and designate services on goods.

Once a descriptive mark, ___ use, is associated with its service, it too is distinctive. Fanciful marks, like Exxon, Polaroid, Clorox, Rolex, Lexus, and Pepsi are all made-up words. They are highly distinctive.

And that brings us to Meghan’s desire to adopt and exclusively use “archetypes” to designate the source of her podcast. The word is a real, not made up, word so it is considered arbitrary; it is arbitrary because it has no association with the category of goods it will be used to brand, such as Apple and computers.

Unless it is already in use by someone else in association with some mass communication or media effort, that word will serve nicely as a mark. Markle will be able to prevent others from adopting it in connection with mass communications and media uses, but clearly she can’t, and does not intend to, prevent others from using the word in conversation or for purposes of branding services unrelated to hers.

Many arbitrary marks are in use. Apple, Pioneer, Amazon, Coach, Shell, Sprite, Virgin, Dove, Tide — the list goes on and on. Their use as marks does not deprive others from use. For example, people can discuss the tide, ask for apples at the market, coach little league, cook with virgin olive oil, and write novels about the Amazon rainforest. Once adopted and used, these marks do entitle trademark owners to enjoy exclusive rights to use these marks in their product or service category to designate the owner as the source of goods.

It’s hard to imagine why the tabloid is outraged over Meghan’s efforts to capture a word for her exclusive use in a media category. It happens every day. Maybe it was merely a slow news day and the paper needed filler.

Jim Astrachan is a partner at Goodell, DeVries, Leech & Dann, LLP and has taught trademark law since 2001 at the Carey School of Law and the University of Baltimore School of Law. He is the co-author of the 6. Vol. Law of Advertising, published by LexisNexis.

This article originally appeared in the April 8, 2022 issue of The Daily Record.