{UAH} Ttabamiruka vs UNAA

Since I posted the trademarks yesterday, I have gotten a lot of trademark questions. Many people asked me to compare the marks I posted with the mark "Ttabamiruka".

In my humble

view, Ttabamiruka is a weak mark and can easily lose its trademark protection.

Generally, there are five types of trademarks: (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful. The level of protection varies in that order.

(1). A generic marks simply indicate the variety of goods/services involved: e.g, "Ttabamiruka" used for a general meeting/great meeting or "Soda" used on soft drinks or "Milk" on milk/diary products are all generic terms. Generic marks never receive any trademark protection; they are free for everybody to use. However, "Soda" on a restaurant is "arbitrary" (see example 5 below), and therefore receives protection.

A generic word is one used by much of the public to refer to a class or category of product or service. A generic name can not be protected or registered as a trademark or service mark. For example, no one seller can have trademark rights in "car" or "shoe." If a seller did have exclusive rights to call something by its recognized name, it would amount to a practical monopoly on selling that type of product. Even established trademarks can lose their protection if they are used generically. e.g "thermos" and "escalator" are good examples of long established marks that lost trademark protection because they are generic words. 

If your opponent is complaining that you have used the word "bakery" for a bake shop or "car" for a car repair shop, then you can safely guess that the complaint is baseless. On the other hand, if your opponent is concerned about the fact that both of you use of the term "Yummy Milk" on car repair shops, then the complaint may have some merit.

(2) A descriptive mark, predictably, describes the product: "UGANDAN NORTH AMERICAN ASSOCIATION" describes one one of the association for Ugandans in North America, HOLIDAY INN describes a vacation hotel and FISH-FRI describes batter for frying fish. Descriptive marks do not receive any trademark protection unless their user has used them in commerce and has built up secondary meaning. That is UNAA inserted a disclaimer of "UGANDAN NORTH AMERICAN ASSOCIATION" in the application. A disclaimer does not remove the disclaimed matter from the mark.  It is simply a statement that the applicant does not claim exclusive rights in the disclaimed wording or design apart from the mark as shown in the drawing.
"Secondary meaning" occurs when consumers identify the goods or services on which the descriptive term appears with a single source. In other words, if consumers know that HOLIDAY INN hotels are all affiliated with a single source, then the mark has secondary meaning and receives trademark protection. In my view, "UGANDAN NORTH AMERICAN ASSOCIATION" has gained secondary meaning. Most Ugandans know that refers to UNAA and its activities.
(3) A suggestive mark is one that hints at the product, but which requires an act of imagination to make the connection: DIRT DEVIL for vacuum cleaners or SOLARCITY for solar panels or PENGUIN for refrigerators are examples. Suggestive marks are also strong marks and receive protection.
(4)A fanciful mark is a mark someone made up; examples include "YAHOO" or "GOOGLE".
(5) An arbitrary mark is a known term applied to a completely unrelated product or service; e.g, WINDOWS for an operating system or APPLE for computers.
Fanciful and arbitrary marks are considered strong marks and get substantial trademark protection.

There are a few more wrinkles as well. Some marks are word marks (text only) and others are design marks (images which may or may not include text). Design marks do not provide independent protection for the text incorporated in the design. So if the mark is only a design mark, it doesn't prevent others from using the text so long as they don't copy the design elements.

 

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