When it comes to trademarks, distinctiveness is key. The strength of your trademark depends on its level of distinctiveness. These levels are ranked from the strongest to the weakest:
- Fanciful Marks: These are entirely made-up words, such as “Xerox,” “Kodak,” or “Google.” They have no meaning outside of the brand context, making them the strongest and most protectable.
- Arbitrary Marks: These marks use a word or term that has no relation to the product or service it represents. Examples include “Apple” for computers or “Camel” for cigarettes. Although they don’t directly describe the product, they are highly distinctive.
- Suggestive Marks: These marks suggest a quality or characteristic of the product or service but don’t directly describe it. For example, “Dunkin’ Donuts,” “Netflix,” or “Jaguar.” Suggestive marks are also strong and protectable.
- Descriptive Marks: These marks describe a characteristic of the product or service, like “Best Buy” for electronics. Descriptive marks can acquire distinctiveness over time through usage and advertising, but they are initially weaker than fanciful, arbitrary, or suggestive marks.
- Generic Marks: Generic terms, like “soap,” “aspirin,” or “bicycle,” can never be trademarked. These terms simply describe the product itself and are not protectable.
The goal is to aim for marks that fall into the first three categories. Descriptive marks can become stronger over time, but generic marks will always remain unprotectable.
How Businesses Can Make Descriptive Trademarks Distinctive
To turn a descriptive trademark into something protectable, businesses must prove that the mark has acquired distinctiveness over time. This involves showing how long the mark has been used, how it has been advertised, and how widely it has been recognized by the public. Factors like sales volume, market presence, and media recognition play a crucial role in proving acquired distinctiveness.
For instance, a phone number that had been parodied on Saturday Night Live was proven to have acquired distinctiveness through its extensive public exposure. With enough evidence, even a descriptive term can be elevated to a distinctive mark.
How Trademark Examiners Evaluate Distinctiveness
Trademark examiners evaluate marks based on the five levels of distinctiveness we discussed. They also conduct searches to see how many other companies are using the same or similar marks. If a mark is too commonly used, it may be considered diluted and weaker. The more a mark is used by others, the less distinctive it becomes, making it harder to register.
Examiners also assess the likelihood of consumer confusion. If your mark is similar to another already registered mark, there’s a risk of confusion. For example, a Big Mac truck and Big Mac hamburger might not cause confusion because they are in different industries, but similar logos or names in the same industry could lead to issues.
Understanding Secondary Meaning and Descriptive Marks
Secondary meaning occurs when a descriptive mark becomes strongly associated with a particular source in the minds of consumers, even though it originally described the product or service. McDonald’s is a prime example—what was once just a name has now become synonymous with fast food.
A famous case involving Burger King shows how secondary meaning can be geographically limited. In this case, a local Burger King had registered the name before the national chain expanded and tried to stop them from using it in the area. The court ruled that the local Burger King had developed secondary meaning and could prevent the national brand from using the name within a certain radius.
The Impact of Distinctiveness on Trademark Registration
Distinctiveness is the most important factor when applying for a trademark with the USPTO. A strong, distinctive mark is more likely to be successfully registered because it reduces the chance of consumer confusion and ensures that the trademark holder’s brand identity is protected. Trademark examiners assess how easily consumers can identify the source of goods or services based on the mark.
A distinctive mark ensures that consumers can differentiate products, preventing the potential for confusion or the loss of brand identity.
Can Trademarks Shift in Distinctiveness Over Time?
Yes, trademarks can shift in distinctiveness over time. While fanciful, arbitrary, and suggestive marks are inherently distinctive, descriptive marks can acquire distinctiveness through long-term use and consumer recognition. This shift typically happens when the public starts to associate the mark with a specific source.
Tips for Creating a Strong, Distinctive Brand Name
To create a brand name that stands up to trademark challenges, follow these guidelines:
- Aim for Fanciful, Arbitrary, or Suggestive Marks: Start with a mark that is inherently distinctive. Avoid descriptive and generic terms.
- Be Unique: Create a name that reflects your brand’s identity and values, but make sure it stands out from the competition.
- Check Availability: Before finalizing your brand name, conduct a thorough search to ensure it’s available as a trademark, domain name, and social media handle.
- Consider Simplicity: Choose a name that’s easy to spell, pronounce, and remember. A simple name helps with brand recognition and avoids potential trademark issues.
- Monitor Your Trademark: Once your trademark is registered, monitor it to ensure no one else is using it or diluting your brand.
- Consult with a Trademark Attorney: Working with a trademark attorney ensures that your application is properly filed and that you receive legal advice on protecting your brand for years to come.
Conclusion
Creating and protecting a strong trademark is essential for any business. By understanding the levels of distinctiveness and the trademark registration process, you can safeguard your brand and its identity.
