Trademark Distinctiveness Spectrum

What is a distinctive trademark and how to choose a distinctive trademark?

 

 

In order for a trademark to receive federal trademark registration, the United States Patent and Trademark Office (USPTO), and more specifically, the Examining Attorney, must conclude the applied for trademark is distinctive. The purpose behind only giving protection and rights to distinctive trademarks is to avoid people or companies using names that would unfairly harm competitors. For example, a paper company cannot get trademark protection for the word PAPER because it would preclude competitors from using the word PAPER to sell... paper. Giving these sort of generic words trademark protection is a terrible policy idea that would ultimately hurt consumers.

 

For guidance about what is and is not a distinctive mark, Examining Attorneys at the USPTO are guided by the Trademark Manual of Examining Procedure (TMEP). The relevant section of the TMEP regarding distinctiveness is §1209 which highlights when Examining Attorneys should reject trademark applications because they are not distinctive. In order to determine whether a trademark is distinctive, the Examining Attorney will determine whether the mark is generic, descriptive, suggestive, arbitrary or fanciful.

 

It is important whether a trademark is, for example, descriptive or arbitrary. An arbitrary trademark will offer broader protection to the trademark owner against potential infringement than a descriptive mark because it is more creative and is less related to the goods or services sold under the trademark. These distinctions become important when trademark owners are seeking to prevent alleged third party infringers from using similar trademarks or when a USPTO Examining Attorney is doing a likelihood of confusion analysis.

Generic - if an Examining Attorney determines a trademark is “generic” it usually is fatal to a trademark application to proceed to registration. A trademark application is generic when the applied for trademark is the common name for a product or service. For example, someone cannot receive trademark protection for BREAD if they sell bread. Something brands are weary of is making sure their trademark does not become generic due to how the trademark is used aka “genericide.” For instance, when escalators were first invented, the owner of the invention had a trademark registration for ESCALATOR. Over time, everyone used the ESCALATOR trademark as the generic word for escalators, and thus the company lost their trademark rights to the term ESCALATOR. Similar things happened to ASPIRIN and TELEPROMPTER.

 

 

Descriptive - descriptive trademarks include some sort of term that describes the goods or services sold under a trademark. For example the trademark INTERNATIONAL BUSINESS MACHINES, i.e. IBM, is probably descriptive for selling computers or other related “machines” to businesses. In addition, all surnames or geographic names are treated as descriptive trademarks. In order to receive trademark registration at the USPTO for merely descriptive marks, the owner of the trademark application must demonstrate to the Examining Attorney that the trademark has achieved “secondary meaning.” In order to show “secondary meaning,” the owner of a trademark application must demonstrate that the descriptive trademark has achieved a “secondary meaning” to consumers beyond the merely descriptive nature of the trademark. The way a descriptive trademark can gain secondary meaning is through long term use, how well known the mark is by relevant consumers, and through advertising and spending to promote the trademark.

 

Suggestive - a suggestive trademark is one that can be seen as describing a characteristic or quality related to the goods or services sold, however, it is not obvious based solely on the trademark itself. In other words, the trademark must not alone describe the goods or services, but after thought or some imagination a consumer can conjure up the suggestive meaning of the trademark. Distinguishing between suggestive and descriptive trademarks is tricky and often a point of contention between an applicant for a federal trademark registration and an Examining Attorney. Suggestive marks are considered more distinctive than descriptive marks, and thus enjoy a wider scope of protection. In addition, there is no requirement to show a mark has achieved secondary meaning if it is suggestive rather than merely descriptive.

 

Arbitrary - an arbitrary trademark is where the trademark has a commonly known meaning that has nothing to do with the product or service being sold under the mark. Arbitrary marks enjoy a wider scope of protection than suggestive marks. Arbitrary trademarks make for great trademarks that can have lasting power, receive broad protection, and are inherently distinctive. The benefit of choosing an inherently distinctive trademark is the trademark owner will never need to litigate or debate whether the mark is distinctive in litigation or with a USPTO Examining Attorney.

 

Fanciful - a fanciful trademark is a made up word or phrase coined by the trademark owner. Fanciful trademark enjoy the broadest protections as they are the most distinctive trademarks. However, an issue fanciful trademarks need to keep in mind is preventing their trademark from becoming generic through “genericide” the way FRISBEE, ESCALATOR, and ASPIRIN did in the past, and how XEROX nearly lost their trademark rights before spending millions on a campaign to alert consumers that XEROX was a paper copier brand, not the actual verb for making copies.

 

 Examples for each level of trademark distinctiveness and level of trademark protection at each level

 

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