Like fanciful marks, arbitrary marks are those trademarks or service marks that consist of a word or symbol that has nothing to do with the products or services being offered. Unlike fanciful marks, an arbitrary mark is a real word, but the word is used such that there is no connection to the meaning. For example, the logos “Apple” for personal computers, “Sun” in connection with computer technology, or “Camel” in connection with cigarettes are arbitrary marks. They are different from descriptive marks, which describe some aspect of the products or services. Neither “Apple” nor “Sun” describes any aspect of computers. “Camel” does not describe anything about cigarettes.
Arbitrary marks are considered inherently distinctive and are given some of the broadest protections, alongside fanciful and suggestive trademarks. However, protection for an arbitrary mark only exists if the arbitrary mark is not confusingly similar to an earlier mark. For example, “Apple Core” for computers would be confusing in connection with Apple computers. Similarly, “Sunlight” in connection with computer technology might be confusingly similar to “Sun.”
Arbitrary trademarks are a strong choice if you are a business owner trying to figure out the name of your goods, services, or company. You can pick an arbitrary mark by using a word found in the dictionary, but juxtaposing it with products or services to which the word has no connection.
If you receive a cease and desist letter from a competitor, alleging trademark infringement or dilution of an arbitrary mark, you may be concerned about the likelihood of your competitor’s success at trial. In a federal infringement case, the senior user of an arbitrary mark will need to prove likelihood of confusion. This may be straightforward where you are using the exact same arbitrary mark for the same type of goods or services. However, infringement cases often go to trial because the situation is more ambiguous.
When deciding whether there is a likelihood of confusion, courts will look at what are called “Polaroid factors.” These include:
In general, an arbitrary mark is a strong mark, and if you are a junior user using a very similar arbitrary mark (such as “Sunlight” for computer technology) the senior user will have a strong infringement case. However, marks have to be compared in their entirety and in the context of the other factors.
For example, if you are a business owner using the term “Sunlight” for automobile technology, not computer technology, an ordinary consumer might be less likely to be confuse your use of “Sunlight” with Sun, the computer technology company. On the other hand, if Sun can show it is moving into automotive technology, your junior use would be more likely to be considered infringing. Courts have previously found infringement of the Coca Cola mark because Coca Cola’s mark has been licensed for clothes, glassware, and other non-food objects.
Your intent as a defendant will be relevant. If you continue to use a mark after receiving a cease and desist letter explaining how your mark is infringing the earlier arbitrary mark, the court is more likely to find that you intended to cause consumer confusion. If you have sufficient resources, you may want to conduct a consumer survey to determine whether there is any actual consumer confusion.
