Having a distinctive or unique name for your business, product, or service is essential for consumers to differentiate your offering from those of other companies. Not just that, but trademark distinctiveness is also important for being able to register your trademark and obtain legal protection for your intellectual property under trademark law from infringement by competitors in the marketplace. But there are limits to the scope of protection based on the types of trademarks, as well as what the United States Patent & Copyright Office (USPTO) will accept in an application to register a given mark.
In this article, we will explore why trademark distinctiveness matters, along with the different categories of distinctiveness and how they might apply to your brand.
For trademarks to be eligible for federal registration and protection, a trademark is required to “identify and distinguish” the goods or services being provided under that name. A mark’s ability to identify and distinguish the relevant business or offering is known as its “distinctiveness”.
You can think of trademarks as existing on a spectrum of distinctiveness, from generic marks at one end of the spectrum, to fanciful marks at the other. What do those terms mean? A generic mark is one which literally describes the goods or services on offer (think “Dry Cleaners” or “Taxi Drivers”), and are generally not eligible for legal protection, while fanciful marks consist of invented words or names like Google, Samsung, or Xerox, which receive the most protection.
There are other types of trademark protection on this spectrum, so let’s take a closer look at the different types of trademarks as described under trademark law.
As mentioned above, a generic mark may identify the product or service on offer (e.g. “Yard Maintenance” or “Pool Cleaning”), but cannot distinguish the source of the offering. As such, a generic mark fails the basic test of being able to both identify and distinguish the relevant goods or services. There are some exceptions to this, but generally speaking, generic marks are not eligible for trademark protection under the law.
It’s also possible for a trademark to become generic over time if a company fails to police and enforce its trademark in the market. “Kleenex”, “Q-tips”, or “Velcro” are all examples of trademarks which began as unique, but enjoyed so much success and were the victims of so many copycats that the public eventually began to associate the type of product rather than the specific brand with the products themselves.
A descriptive mark describes specific characteristics of the product or service, such as “American Airlines” or “24-Hour Fitness”. These trademarks seem somewhat generic, and do not become eligible for trademark protection until they become associated with the products or company in the minds of the public, which is known as acquired distinctiveness. A mark that references quality, characteristics, functions, features, purposes, or uses can qualify as descriptive.
Suggestive marks do just what the name describes; that is, they “suggest” the goods or services that they are being applied to. One example is “Greyhound” which implies speed and sleekness without specifically mentioning the company’s passenger bus services. Or “Airbnb”, which implies short-term stays available “over the air,” or the internet, in this case. Suggestive marks provide the benefits of a descriptive mark but tend towards the more “fanciful” end of the spectrum, making them more unique and therefore stronger under trademark law.
An arbitrary mark is a common word or name that has no relation to the company, goods or services being offered. “Apple” is probably the best known example of this, which sells computers and other technology, not produce. “Camel” is an animal, not a cigarette. These marks would be considered generic if they actually sold apples or camels, but since they do not, they are considered both unique and protectable.
Fanciful marks receive the most copyright protection under trademark law. These are invented words or phrases associated with a specific company, brand, product or service. These have become very common with the proliferation of technology companies like “Google”, “Verizon”, etc. which are uniquely connected with the brands in question.
What Is Acquired Distinctiveness?
As noted above, acquired distinctiveness is important for trademarks that fall towards the generic end of the spectrum, such as merely descriptive marks. It is still possible for these trademarks to receive legal protection, but it will take time with your company’s goods or services being available on the market to then become associated with your specific brand in the minds of enough people in the public.
These are a few examples of the spectrum of trademark distinctiveness, but the characteristics of a trademark can be critical to selecting a trademark that is protectable and enforceable. If you’re looking for legal advice on searching, selecting and registering your trademark, or you have questions about the process of trademark registration, our experienced and knowledgeable copyright & trademark attorneys at Allen, Dyer, Doppelt & Gilchrist are ready to assist you. Get in touch today to schedule a consultation, or find out how our trademark attorneys can help with your trademark application!
About the Author
Ryan Santurri is a Florida Board Certified Intellectual Property Law Attorney. He advises clients in the areas of intellectual property and related litigation involving patents, trademarks, trade secrets, copyrights and right of publicity. He also provides trademark and copyright acquisition and counseling services. Ryan has also been involved in successful appeals to the Federal Circuit, including favorable appellate decisions on rulings from trial and from the United States Trademark Trial and Appeal Board.