Trademark Talk with Erin, Ep. 7: What is a distinctive trademark?
Episode 7 of Trademark Talk with Erin is now out! Episode 7 discussed inherently distinctive marks. In this week’s blog post, we will expand a little bit more on inherently distinctive marks and discuss the differences between suggestive, arbitrary, and fanciful marks.
What is an Inherently Distinctive Mark?
We’re going to explain what inherently distinctive means before we discuss the differences between suggestive, arbitrary, and fanciful marks. The Trademark Manual of Examining Procedure (“TMEP”) states that a “mark is inherently distinctive if its intrinsic nature serves to identify a particular source.” Inherently distinctive include suggestive marks, arbitrary, and fanciful marks. However, descriptive marks and generic marks are not inherently distinctive marks.
Suggestive marks are “are those that, when applied to the goods or services at issue, require imagination, thought, or perception to reach a conclusion as to the nature of those goods or services.” So suggestive marks do not immediately convey to the consumer what the products are. For example, think of Dunkin’ Donuts. What are you dunking the donuts into? Is it coffee? Is it milk? You can’t tell right away! This is in contrast to descriptive marks, which immediately tell the consumer what the product is.
On the other hand, arbitrary marks are “words that are in common linguistic use but, when used to identify particular goods or services, do not suggest or describe a significant ingredient, quality, or characteristic of the goods or services.” In other words, the trademark has a common dictionary or well understood meaning, but does not use that definition to describe the products or services. For example, think of the Apple trademark. Apple makes smart phones and other electronic goods rather than selling the apple fruit.
Last but definitely not least, we have fanciful marks. Fanciful marks are “terms that have been invented for the sole purpose of functioning as a trademark or service mark.” Moreover, “such marks comprise words that are either unknown in the language or are completely out of common usage .” Thus, you can think of fanciful marks as marks that were made just for the purpose of being a trademark. Think of “Pepsi” or “Google,” which are words that were made to be a trademark.
Inherently Distinctive Marks Qualify for Trademark Protection
From the get go, inherently distinctive marks can qualify for trademark protection. Meaning, they do not need to acquire secondary meaning before they qualify for trademark protection. But determining whether a trademark is inherently distinctive is not always easy. For example, the line is blurry between what is a suggestive mark and what is a descriptive mark. How do you necessarily say that some thought or imagination is needed to determine what the nature of the goods are? A trademark attorney can help guide you in determining whether your mark is suggestive or descriptive. Moreover, they can guide you through the trademark application process itself.
What are your thoughts on inherently distinctive marks? Leave a comment below to let us know what you think!
Watch Episode 7 of Trademark Talk with Erin right here!
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Disclaimer: This article is not legal advice. It is only for educational or entertainment purposes only. Please do not use the article or contents of the article without permission. For legal advice and questions, please contact registered Patent Attorney Vincent LoTempio.