In one of our first posts, we discussed the five categories of trademarks (Generic – Descriptive – Suggestive – Arbitrary – Fanciful) and how a mark becomes more protectable as it moves across the spectrum. Laudatory trademarks are often included in this list as “descriptive marks,” requiring a showing of secondary meaning to be protectable. However, it has been recognized that many laudatory marks do not actually describe any feature of the product it is used with; rather, they tend to suggest that the product is of high quality or “better” quality than other similar products.
Laudatory terms that may be considered suggestive include, for example, “Select,” “Plus,” “Super,” “Deluxe,” or “Gold Medal.” These terms are not descriptive, in that they do not provide direct information regarding the product itself. Rather, these terms are suggestive as they require the consumer to use imagination, thought and perception to connect the mark to the goods. And even then, the connection may be unclear. Does “Deluxe” imply that the product is bigger, that it works better or is somehow more luxurious? Perhaps the product includes additional features not present in the competitors’ products? While the exact meaning is not clear, the mark does connote that the product named “DELUXE” is somehow superior.
However, even if suggestive, laudatory trademarks are rarely found to be protectable without a showing of secondary meaning. Further, it is often held that, as with descriptive marks, users of suggestive laudatory marks may not be able to monopolize the right to label or name its product in such a way that suggests or implies that it is the finest product on the market. Thus, laudatory terms do not fit neatly into the usual trademark framework, leading to uncertainty regarding the protectability of laudatory marks.
Laudatory trademarks are generally considered weak and entitled to a narrow scope of protection, even after a showing of secondary meaning. You may be able to register your laudatory mark, but your competitors are still likely to be able to use that mark under the various fair use defenses (i.e., descriptive and nominative fair use). As we have discussed in prior posts, the ultimate outcome is often linked to overall look and feel of each use. For example Ringling Bros. and Barnum & Bailey Combined Shows were able to protect it laudatory mark “The Greatest Show on Earth” against use of the phrase “The Greatest Used Car Show On Earth” by a car dealership. Even though the district court found the mark “descriptive and weak,” it was noted that the mark had become associated with the famous circus (secondary meaning) and, perhaps more importantly, that the defendants were using big red circus-styled lettering, and were otherwise trying to draw a connection between its services and the circus.
Apart from being weak, the other issue to be wary of in connection with laudatory terms is claims of false advertising. Use of a laudatory mark can allow the trademark owner to make a statement regarding the quality of the product within the name of the product itself. This risk may be higher for heath care organizations that already have to be wary of making unsubstantiated claims regarding their goods and services. Where a supermarket may be able to get away with use the of mark GREATEST MARKET ON EARTH as mere puffery, use of GREATEST HOSPITAL may cause problems.
Claims of false advertising related to laudatory trademarks tend to be rare as such use can be considered merely advertising “puffery” (to be discussed later this week). However, improper use of a laudatory term can result in successful false advertising claims. A laudatory trademark should not be used as a shortcut to the proper development of brand and product loyalty.
Care should also be taken to avoid use of a laudatory trademark in a comparative ad. For example, while use of BEST in an ad alone may be considered puffery, use of BEST in a comparative ad, even if this is a mark that you have been using for many years, could be seen as making an unintended and possibly unsubstantiated claim regarding the superiority of your product over the other products in the ad.
Our Insight. Your Advantage. While laudatory marks may at first appear to be a good choice, a full analysis of the mark, with its limited protectability and potential for negative claims, may show that it is not worth the trouble or the cost. The cost of developing and launching a new mark may be better spent on strong, highly protectable marks.