When a party seeks to protect a mark that is unregistered, the plaintiff has the burden to establish its entitlement to protection under the Lanham Act due to the “distinctiveness” of the mark. Platinum Home Mortg. Corp. v. Platinum Fin. Grp., Inc., 149 F.3d 722, 727 (7th Cir. 1998).

“The first step in determining whether an unregistered mark or name is entitled to the protection of the trademark laws is to categorize the name according to the nature of the term itself.” Int’l Kennel Club of Chi., Inc. v. Mighty Star, Inc., 846 F.2d 1079, 1085 (7th Cir. 1988). “Marks are often classified in categories of generally increasing distinctiveness . . . they may be (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful.” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992); see also Packman v. Chi. Tribune Co., 267 F.3d 628, 641 (7th Cir. 2001). A generic term is “one that is commonly used and does not identify any particular source and therefore, is not entitled to any trademark protection.” Platinum Home Mortg., 149 F.3d at 727. A descriptive mark “describes the ingredients, qualities, or characteristics of an article of trade or a service” and may be protectable. Id. (internal quotation marks omitted). A suggestive mark “stands for an idea which requires some operation of the imagination to connect it with the goods.” Id. (internal quotation marks omitted).

While a term that is suggestive is automatically entitled to trademark protection, if a term is merely descriptive, the plaintiff must show that it has acquired “secondary meaning in the collective consciousness of the relevant community.” Id. Courts consider several factors when deciding whether secondary meaning has been established: “(1) the amount and manner of advertising; (2) the sales volume; (3) the length and manner of use; (4) consumer testimony; and (5) consumer surveys.” Id. (internal quotation marks omitted).

Sometimes this issues arise in the context of competing restaurants. Courts will focus on the ‘salient portion’ of the marks. Sullivan vCBS Corp., 385 F.3d 772, 777 (7th Cir. 2004)) The Court compares the parties’ marks in the context of what happens in the marketplace, not necessarily by looking at the two marks side by side. TyIncvJones Grp., Inc., 237 F.3d 891, 898 (7th Cir. 2001). Where “the public will encounter the marks in written as well as spoken form . . . it is essential to consider the marks’ visual characteristics” as well. Barbecue MarxIncv551 OgdenInc., 235 F.3d 1041, 1044 (7th Cir. 2000). 

If you do choose a descriptive name for your restaurant, the name may not be subject to attack based on dictionary definitions linking that term to eating, drinking or entertainment establishments, and on news articles with uses of either in relation to such establishments.

If the term is found to be “highly descriptive,” you will need to prove that the term has acquired “secondary meaning. This can be done by:

  • Showing the term has a double meaning in the minds of your customers 
  • Showing your sales and advertising 
  • Showing how third parties refer to your mark on social media, in articles, or in communications.